[CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTIONS OF THIS AGREEMENT HAVE
BEEN REDACTED AND HAVE BEEN SEPARATELY FILED WITH THE COMMISSION.]
EXHIBIT 10.16
ALLIANCE, TECHNOLOGY TRANSFER, AND LICENSE AGREEMENT EFFECTIVE
APRIL 1, 2003 BETWEEN SYMYX TECHNOLOGIES, INC., SYMYX DISCOVERY
TOOLS, INC. AND EXXONMOBIL RESEARCH AND ENGINEERING COMPANY
This ALLIANCE, TECHNOLOGY TRANSFER, AND LICENSE AGREEMENT
("Agreement"), effective retroactively to April 1, 2003 ("Effective Date"), is
entered into by and between:
EXXONMOBIL RESEARCH AND ENGINEERING COMPANY ("ExxonMobil");
and
SYMYX TECHNOLOGIES, INC. ("Symyx Tech") and SYMYX DISCOVERY TOOLS, INC.
("Symyx DTools") hereinafter referred to collectively as "Symyx".
BACKGROUND
Symyx Tech owns and is developing novel, proprietary methods for the
combinatorial preparation and screening of novel materials;
ExxonMobil and its Affiliates are interested in actively developing
novel technologies and materials for use in their diversified business
activities;
ExxonMobil and its Affiliates have significant expertise and investment
in the synthesis and the commercial manufacture and supply of * and processes of
using the same and derive significant commercial advantage therefrom;
Symyx DTools is a wholly-owned subsidiary of Symyx Tech and sells and
licenses equipment, instruments, workflows, and software for engaging in high
throughput materials research;
ExxonMobil Chemical Company, a division of Exxon Mobil Corporation
("EMCC") and Symyx Tech previously entered into the CRDLA and the Interim
Agreement;
1
* Confidential treatment requested
ExxonMobil, EMCC, Symyx Tech, and Symyx DTools have entered into the
Interim Alliance Agreement; and
ExxonMobil and Symyx desire to extend and expand the scope of the
activities formerly conducted by Symyx and EMCC pursuant to the above-noted
agreements on the terms and conditions set forth below and with the
participation of certain ExxonMobil Affiliates as permitted herein.
NOW, THEREFORE, for and in consideration of the covenants, conditions,
and undertakings set forth in this Agreement, it is agreed by and among the
parties as follows:
ARTICLE 1
OVERVIEW
1.01 Definitions. All capitalized terms not otherwise defined in
this Agreement are defined in Exhibit A to this Agreement.
1.02 General. An objective of this Agreement is to develop,
demonstrate effectiveness of, and transfer (a) Combinatorial Chemistry tools,
(b) Informatics, and (c) know-how to create a measurable step change in the
research and development capabilities and efficiencies of ExxonMobil and its
Affiliates, and the pace of discovery, development, and commercialization.
1.03 Key Program Goals. Consistent with the resource allocation
described in this Agreement, Symyx will use commercially reasonable efforts to
achieve the following key goals ("Key Program Goals"):
1.03.1 Implementation, pursuant to Article 5, of the Software
and the Developer's Kit Software within ExxonMobil, EMCC, and other
Majority Owned Affiliates designated by ExxonMobil including: (a)
deployment (including software installation, verification, and user
training) of the Software to * in-house users by *; (b) training a
minimum of * in-house trainers selected by ExxonMobil or its Designee
to assist in the training by a date consistent with the Software
Deployment Plan; and (c) application of the Software to existing
in-house information or data that can utilize the Symyx Informatics
capability, as specified in the Annual Program Goals. Symyx shall be
responsible for developing and implementing plans for achieving these
goals, and ExxonMobil and its Designees shall provide commercially
reasonable support and access to allow the achievement of these goals,
consistent with the preceding sentence.
1.03.2 Transfer and implementation, pursuant to Article 7, of
at least * Discovery Tools(R) Systems (including the sum of fractional
Discovery Tools Systems as agreed pursuant to Section 7.02) within
ExxonMobil and its Affiliates, including the development of at least *
different high-throughput Tool-Build/Workflows, by the end of the Tool
Delivery Period. Incremental Add-Ons or other incremental modifications
to existing Discovery Tools Systems shall not count in determining
compliance with the foregoing goal. However, the purchase of
Incremental Add-Ons or other incremental
2
* Confidential treatment requested
modifications to existing Discovery Tool Systems shall be at the price
defined in Article 7 and shall count toward the dollar amounts set
forth therein.
1.03.3 Execute, pursuant to Article 2, at least * Projects by
*.
1.03.4 Implement, as set forth in this Agreement, knowledge
transfer, training, and intellectual property licenses in support of
the Key Program Goals listed above.
1.04 Annual Program Goals. In addition to the Key Program Goals
specified in Section 1.03, the Advisory Committee, in consultation with the
Research Committees and subject to the final approval of the Executive
Committee, shall set annual goals ("Annual Program Goals") for each twelve (12)
month period commencing on June 1st of each year during the Research Program
Term and ending on the following May 31st. Such Annual Program Goals shall
specify the activities to be carried out under this Agreement during such
twelve-month period including, without limitation:
(a) the Software implementation activities to be carried out
during such twelve-month period;
(b) the Discovery Tools Systems to be fabricated and
transferred to ExxonMobil and its Affiliates during such twelve-month period;
(c) the Research Projects and Tool-Build Only Projects that
will be active during such twelve-month period, including anticipated completion
dates for active Projects and proposed start dates for new Projects; and
(d) any other activities to be carried out during such
twelve-month period in support of achieving the Key Program Goals.
The Advisory Committee shall submit proposed Annual Program Goals to the
Executive Committee for approval and shall make all changes to the Annual
Program Goals requested by the Executive Committee.
ARTICLE 2
RESEARCH AND DEVELOPMENT PROGRAM
2.01 Research Program. Subject to the terms and conditions set
forth in this Agreement, Symyx Tech and ExxonMobil (and its Designees) shall, in
a collaborative effort (a) conduct research and development activities in the
ExxonMobil Exclusive Fields, (b) conduct research and development activities
with respect to the development and use of a * Workflow and (c) conduct research
and development activities with respect to the development and use of high
throughput tools and workflows in the Tool-Build Only Areas, in each case
utilizing the FTEs described in Section 8.01. Prior to activation of a Research
Project in one of the ExxonMobil Exclusive Fields, or the activation of a
Tool-Build Only Project in the Tool-Build Only Areas, ExxonMobil and Symyx Tech
shall prepare a written plan describing the research
3
* Confidential treatment requested
and development activities to be conducted by each party (or its Affiliates that
have agreed to participate) with respect to such Project ("Research Plan");
provided, however, that the Research Program shall not include any work directed
toward the Symyx Proprietary Fields. The Research Plan for each Project shall be
submitted to and approved by the Advisory Committee. The initial Research Plan
for the * Project is attached hereto as Exhibit G1, and the initial research and
development activities for the * project is attached hereto as Exhibit G2. The
initial research and development plan with respect to the * (item (b) above) is
set forth in Attachment H-1 to Exhibit H ("* Project").
2.01.1 Responsibility - Symyx Tech. During the Research
Program Term, Symyx Tech shall use efforts that are reasonable in the
circumstances and consistent with professional standards applicable to
research in the * industries, (a) to conduct research activities in the
ExxonMobil Exclusive Fields in accordance with the Research Plans
(including the Research Plan for the * Project) to identify, discover,
or synthesize Lead Materials and create Novel Process Technology as set
forth in the Research Plans; (b) to conduct research and development
activities, as set forth in Exhibit H, with respect to *; and (c) to
conduct research and development activities with respect to the
development and use of high throughput tools (including instruments,
equipment, and software) and workflows in the Tool-Build Only Areas in
accordance with the Research Plans (including the Research Plan for the
* Project). The Research Plans and the * Research and Development Plan
entail scientific research and, accordingly, there is no warranty or
guarantee that such research or any component thereof will be
successful. Notwithstanding any other provision of this Agreement,
Symyx shall not, without its consent, be required to perform research
activities other than in accordance with the Research Plans and the *
Research and Development Plan, or utilize a number of FTEs in excess of
the number of FTEs specified, funded, and paid for by ExxonMobil as set
forth in Section 8.01. Symyx Tech shall assign staff to the Research
Program consistent with the quality and experience of the staff Symyx
Tech assigns to internal and Third Party research programs; provided
that ExxonMobil shall have the right to require Symyx Tech to correct
deficiencies in the quality and experience of the individuals assigned
to the Research Program. During the Research Program Term, the key
personnel set forth in Section I1 of Exhibit I shall have
responsibility within Symyx for the Key Program Goals (except those
relating to the Software Deployment Plan) and shall be available to
perform Research Program activities for at least the amount of time
necessary to effectively carry out such responsibility, provided that
such key personnel remain Symyx employees during such time. Symyx shall
use reasonable efforts to retain such key personnel during the Research
Program Term, consistent with its employment policies, and if such
individuals are no longer employed at Symyx during the Research Program
Term, Symyx shall use reasonable efforts to replace such individuals
with personnel having comparable skills. Changes to the key personnel
set forth in Section I1 of Exhibit I may be made from time to time by
the Advisory Committee.
2.01.2 Responsibility - ExxonMobil. During the Research
Program Term, ExxonMobil and its Designees shall use commercially
reasonable efforts (a) to conduct research activities under this
Agreement in accordance with the Research Plans and the *
4
* Confidential treatment requested
Research and Development Plan and (b) to provide Symyx Tech technical
information ExxonMobil deems necessary to conduct the Research Program
and technical support as specified in the Research Plans and the *
Research and Development Plan. ExxonMobil's efforts in conduct of the
Research Program shall be reasonable under the circumstances and
consistent with professional standards applicable to research in the *
industries. Except as otherwise provided in a Research Plan or in the *
Research and Development Plan, ExxonMobil shall solely determine what
information, technology, data, technical support, or other materials
belonging to ExxonMobil or its Affiliates, including ExxonMobil
Proprietary Materials, are to be provided to Symyx Tech and the extent
such information, technology, data, technical support or other
materials are to be provided to Symyx Tech under this Agreement.
ExxonMobil shall provide to Symyx Tech known requirements for the safe
handling of ExxonMobil Proprietary Materials, and Symyx shall follow
standard industry practices in handling such ExxonMobil Proprietary
Materials.
2.01.3 Prior Research. Subject to EMCC's prior agreement, as
evidenced by EMCC's execution of the statement set forth in Section
15.27 hereof, this Agreement shall supercede the CRDLA, and the CRDLA
is terminated, as of the Effective Date. All work remaining to be
performed under the CRDLA with respect to the * Research Projects
active under the CRDLA as of the Effective Date, as described in
Section 2.01, shall be performed under this Agreement, and shall be
managed pursuant to the provisions of Article 3. Research activities
performed under the CRDLA (including research activities performed
under the Interim Agreement) and the Interim Alliance Agreement shall
be considered to be work performed in the Research Program for all
purposes of this Agreement, including without limitation license
payment obligations set forth in Article 8 of this Agreement; provided,
however, that payments made to Symyx Tech under the CRDLA, the Interim
Agreement and the Interim Alliance Agreement shall not offset or reduce
the payments provided for under this Agreement, except as expressly set
forth in Sections 8.01.3, 8.05 and 8.06. In addition, Confidential
Information supplied by one party to another party under the CRDLA, the
Interim Agreement and the Interim Alliance Agreement shall be
considered as Confidential Information supplied under this Agreement
and shall be governed by the provisions of Article 11 below.
2.02 Research Program Term. The Research Program Term shall
commence on the Effective Date and, unless earlier terminated as provided in
this Agreement, shall continue thereafter until *, or such later period as
determined in accordance with Section 14.01.2, or such other period as
ExxonMobil and Symyx Tech may mutually agree in writing ("Research Program
Term").
2.03 Exclusivity In the ExxonMobil Exclusive Fields. (a) Except as
provided in Section 8.07.4, during the Research Program Term, Symyx shall not
knowingly conduct any research activities, on its own behalf, or on behalf of
Third Parties, in the ExxonMobil Exclusive Fields, provided that Symyx may
conduct research activities on its own behalf (including sponsoring research
activities performed by others on behalf of Symyx) with respect to * as defined
in Exhibit B. In the event that Symyx inadvertently conducts research activities
(other
5
* Confidential treatment requested
than pursuant to Section 8.07.4 and other than with respect to * as set forth
above), on its own behalf, or on behalf of Third Parties, in the ExxonMobil
Exclusive Fields during the Research Program Term, Symyx shall immediately cease
such research activities upon becoming aware that they fall within the
ExxonMobil Exclusive Fields and, to the extent possible, Symyx shall grant to
ExxonMobil, at no additional charge, rights to the results of such research
activities which are equivalent to the rights ExxonMobil would have received had
such research activities been performed under this Agreement. For purposes of
this Section 2.03(a), * shall be considered to be Third Parties.
(b) Notwithstanding the above, Symyx shall be permitted to
validate and demonstrate the basic capabilities of Discovery Tools Systems, on
its own behalf or in connection with a potential sale of a Discovery Tools
System to an Affiliate or a Third Party, within the ExxonMobil Exclusive Fields,
provided that such validation and demonstration work (i) shall not include *,
(ii) shall not be conducted by personnel that work on Research Projects under
this Agreement, and (iii) shall not incorporate or utilize any Program
Technology or Confidential Information of ExxonMobil or its Affiliates.
(c) Notwithstanding the above, in the event that ExxonMobil or
its Designee during the Research Program Term, engages in a research project
(other than research, development or commercialization with respect to Products)
directed to one of the ExxonMobil Exclusive Fields in collaboration with a Third
Party provider of Combinatorial Chemistry services, or becomes aware of a
Majority Owned Affiliate engaging in such activities, ExxonMobil shall promptly
notify Symyx Tech in writing. In such event, ExxonMobil or its Designee shall
either (i) terminate or cause such Majority Owned Affiliate to terminate such
collaborative research program with the Third Party provider of Combinatorial
Chemistry services within * days, or (ii) the definition of the ExxonMobil
Exclusive Fields under this Agreement shall be modified so as to exclude from
its scope the area within said ExxonMobil Exclusive Fields (but not from the
ExxonMobil Business Areas) encompassing the research project engaged in by
ExxonMobil or its Designee or such Majority Owned Affiliate with the Third Party
provider of Combinatorial Chemistry services, provided, however, that such
modification shall not affect any rights that are vested as of such time.
2.04 Independent Research. Except as specifically provided in this
Agreement, and subject to the confidentiality obligations and use restrictions
of Article 11, nothing in this Agreement shall in any way restrict or impair the
right of Symyx or ExxonMobil or their respective Affiliates to conduct
Independent Research. Each party or Affiliate shall own the results of its own
Independent Research and shall have no obligation under this Agreement with
respect to the use or disposition of the results thereof including but not
limited to all information and data resulting therefrom.
2.05 Changes to and Initiation of Projects. The initial Research
Project in the Research Program shall be the "* Project" * as described in the *
Research Plan set forth in Exhibit G1. Exhibit J attached hereto sets forth a
list of potential areas for Research Projects and Tool-Build Only Projects under
this Agreement, provided that such list may be modified at any time by the
Advisory Committee, that there is no expectation that a Project will be
performed in each
6
* Confidential treatment requested
potential area, and that technical and royalty-bearing project scope of any such
Project is subject to mutual agreement and must be defined so as to fall within
the ExxonMobil Exclusive Fields in effect at the relevant time. When ExxonMobil
and Symyx Tech agree to begin a Research Project or a Tool-Build Only Project
during the Research Program Term, such Project shall be documented by adoption
of a Research Plan for such Project. Such Research Plan shall be of similar
detail to the Research Plan for the * Project set forth in Exhibit G1, shall
include criteria for identifying and confirming a Lead Material, staffing for
such Project, the technical and royalty-bearing project scope for such Project,
and generally containing the elements set forth in Exhibit K, and shall be
approved by the Advisory Committee. The Research Committees described in Section
3.02 shall in general provide direction for any changes in their respective
Projects and make recommendations to the Advisory Committee.
2.06 Research Records. Symyx Tech and ExxonMobil or its Designee
shall maintain records of the Research Program (or cause such records to be
maintained) in sufficient detail and in good scientific manner as will properly
reflect the work done and results achieved in the performance of the Research
Program (including information sufficient to establish dates of conception and
reduction to practice of inventions).
2.07 Development, Scale-up, and Commercialization of Products.
ExxonMobil or its Affiliates shall be responsible for all expenses incurred for
in-house development activities and for scale-up and commercialization of
Products by ExxonMobil and its Affiliates.
2.08 Optional Fields. Symyx may engage in discussions with Third
Parties regarding possible collaboration in any Optional Field. Prior to making
a formal proposal to a Third Party to collaborate in an Optional Field, Symyx
will notify ExxonMobil and ExxonMobil shall give written notice to Symyx within
* informing Symyx whether ExxonMobil or an ExxonMobil Affiliate is interested in
negotiating with Symyx to activate a Project in such Optional Field. In the
event ExxonMobil notifies Symyx that it or an ExxonMobil Affiliate is
interested, good faith negotiations shall commence promptly and continue for a
period not to exceed * from the giving of such notice by ExxonMobil to activate
a collaboration in such Optional Field*. If ExxonMobil and Symyx agree to
establish such a collaboration, then such Optional Field shall become part of
the ExxonMobil Exclusive Fields (and shall no longer be an Optional Field and
shall not be within the Symyx Proprietary Fields) and such collaboration may, at
ExxonMobil's option, be substituted for an existing or planned Project. If the
parties have not agreed to establish such a collaboration within such * period,
Symyx shall be free to engage in a collaboration in such Optional Field with a
Third Party, *, and in such event, such Optional Field shall thereafter be
excluded from both the Optional Fields and ExxonMobil Exclusive Fields (but
shall remain within the ExxonMobil Business Areas if otherwise within the
definition of the ExxonMobil Business Areas). Notwithstanding the above, in the
event that ExxonMobil or or its Designee, during the Research Program Term,
engages in a collaborative research program in any Optional Field with a Third
Party provider of Combinatorial Chemistry services, or becomes aware of a
Majority Owned Affiliate engaging in such activities, ExxonMobil shall promptly
notify Symyx in writing. In such event, ExxonMobil or its Designee shall either
(i) terminate or cause its Majority Owned Affiliate to terminate such
collaborative research program with the Third Party provider of Combinatorial
Chemistry services within *, or (ii) such Optional Field
7
* Confidential treatment requested
shall thereafter be excluded from both the Optional Fields and ExxonMobil
Exclusive Fields (but shall remain within the ExxonMobil Business Areas if
otherwise within the definition of the ExxonMobil Business Areas).
2.09 Symyx Proprietary Fields. The Symyx Proprietary Fields listed
in Exhibit E represent subject matter areas that (a) are subject to pre-existing
contractual obligations of Symyx to various Third Parties, (b) are active or
planned to be active at Symyx or (c) are strategic to Symyx' business interests
outside of this Agreement. Symyx will notify ExxonMobil if any pre-existing
contractual obligations relating to * (number * on Exhibit E) expire or
terminate during the Research Program Term.
2.10 Modifications to ExxonMobil Exclusive Fields, Optional Fields,
and Symyx Proprietary Fields. At least annually, or at the request of ExxonMobil
or Symyx, the Advisory Committee shall review requests to modify the ExxonMobil
Exclusive Fields, Optional Fields, and Symyx Proprietary Fields based on the
planned activities in the Research Program, the scope of activities under this
Agreement, obligations to Third Parties and the business interests of ExxonMobil
and its Affiliates and Symyx, provided that neither party shall be obligated to
agree to such modifications. Any such agreed modifications shall be set forth in
a written amendment to this Agreement duly executed by ExxonMobil and Symyx, but
shall not affect any rights that are vested as of such time.
2.11 ExxonMobil Proprietary Materials. As provided in this
Agreement, Symyx Tech may use ExxonMobil Proprietary Materials in the Research
Program. In such event, Symyx shall not acquire rights in such ExxonMobil
Proprietary Materials and Symyx shall not use, test, reverse engineer, disclose,
commercialize, or license such ExxonMobil Proprietary Material without the prior
written consent of ExxonMobil, other than for the use within a designated
Research Project. ExxonMobil shall not incur any license payment obligation to
Symyx under this Agreement for use or modification of an ExxonMobil Proprietary
Material by ExxonMobil or an Affiliate of ExxonMobil except (a) where the
ExxonMobil Proprietary Material is identified by Symyx Tech as a Lead Material,
or modified by Symyx Tech to become a Novel Material, in a Research Project in
which use of the ExxonMobil Proprietary Material has been authorized by
ExxonMobil, and (b) Symyx Tech has selected such Research Project as a
Royalty-Bearing Project.
2.12 Research Program Staffing. When fully implemented, the
Research Program staffing as set forth in Section 8.01 shall generally be
allocated as follows: *. Upon * written notice from ExxonMobil, the * FTEs
required to be engaged in the Field* may be reduced consistent with appropriate
mutually agreed upon reductions in the scope of the * Field.
2.13 Disclaimer. ExxonMobil and Symyx specifically disclaim any
representation, warranty, or guarantee that the Research Program will be
successful, in whole or in part. The failure of Symyx to successfully
synthesize, discover, identify or optimize Agreement Materials as part of the
Research Program shall not constitute a breach of any representation or warranty
or other obligation under this Agreement; provided, however, the foregoing shall
not be construed so as to relieve Symyx from its obligation under this Agreement
to perform research activities in
8
* Confidential treatment requested
the Research Program. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT,
SYMYX AND EXXONMOBIL MAKE NO REPRESENTATIONS AND EXTEND NO WARRANTIES OR
CONDITIONS OF ANY KIND, EITHER EXPRESS OR IMPLIED, WITH RESPECT TO THE PROGRAM
TECHNOLOGY, INFORMATION DISCLOSED HEREUNDER, PRODUCTS, OR EXXONMOBIL PROPRIETARY
MATERIALS, AND HEREBY EXPRESSLY DISCLAIM ANY WARRANTIES OF MERCHANTABILITY, OR
FITNESS FOR A PARTICULAR PURPOSE, OR VALIDITY OF ANY PROGRAM TECHNOLOGY,
PATENTED OR UNPATENTED, OR NONINFRINGEMENT OF THE INTELLECTUAL PROPERTY RIGHTS
OF THIRD PARTIES.
ARTICLE 3
MANAGEMENT
3.01 General Policy. ExxonMobil shall be solely responsible for
selecting the Projects to be pursued in the ExxonMobil Exclusive Fields and the
Tool-Build Only Areas, and the allocation of the research funding set out in
Section 8.01.1 between such Projects; provided, however, that Symyx shall not be
required to undertake any Project, or modification of any Project, without its
consent, which shall not be unreasonably withheld or delayed. Subject to the
limitations of Section 5.01, ExxonMobil shall also be solely responsible for
determining the objectives of the Software Deployment Plan; provided that such
objectives shall be consistent with the Annual Program Goals and Key Program
Goals.
3.02 Establishment of Research Committee. Symyx Tech and ExxonMobil
shall establish a research committee for each Project and for the Software
Deployment Plan ("Research Committee") to: (a) recommend to the Advisory
Committee metrics for each such Project used to assess progress against the
Annual Program Goals and Key Program Goals; (b) determine the format and
frequency for reporting research results for such Project; (c) monitor technical
progress in such Project and report progress to the Advisory Committee; (d)
modify the Research Plan for such Project as needed within the scope of such
Project; (e) recommend modifications as necessary to the Advisory Committee of
the criteria used to define Lead Materials for such Project; (f) recommend to
the Advisory Committee changes in the Project in accordance with Section 2.05;
(g) resolve issues specifically assigned to the Research Committee in this
Agreement; and (h) ensure open communications between the parties. As directed
by the Research Committee from time to time for any given Project, Symyx Tech
shall provide to ExxonMobil or its Designee results from the characterization of
Materials that have been characterized in such Project, such additional
information with respect to such Materials as is reasonably available or
obtainable, and at ExxonMobil's or its Designee's request and expense,
reasonable quantities of a reasonable number of characterized Materials for
further characterization by or on behalf of ExxonMobil.
3.03 Membership of Research Committee. The Research Committee shall
be comprised of * representatives designated by each of Symyx Tech and
ExxonMobil, or such other equal number of representatives as the parties may
from time to time agree in writing, with
9
* Confidential treatment requested
each party's representatives selected by that party. Either party may replace
one or more of their respective Research Committee members at any time, upon
written notice to the other.
3.04 Meetings. During the Research Program Term, the Research
Committees shall meet at regular intervals (at least quarterly) at locations and
times agreed by the parties. Upon consent of the Research Committee, other
representatives of Symyx Tech or ExxonMobil may attend Research Committee
meetings as observers. Research Committee members may participate in any such
meeting in person, by telephone, or by televideo conference. Symyx Tech shall
prepare a written technical report of each Research Committee meeting, which
report will summarize the assessments and conclusions of the Research Committee
regarding the progress of the Research Program in the relevant Project, detail
any changes deemed necessary by the Research Committee to the Research Plan for
the Project and, where applicable, include recommendations to the Advisory
Committee in accordance with Section 3.02(a), (e) and (f). ExxonMobil
representatives on the Research Committee shall be entitled to comment on, and
correct any inaccuracies in, the technical report of each Research Committee
meeting and, when all representatives of the Research Committee are satisfied
with the report, a copy will be provided to each representative of the Advisory
Committee.
3.05 Decision Making. Decisions of the Research Committees shall be
made by unanimous approval. In the event of disagreement between the
representatives of a Research Committee regarding any issue specifically
assigned to such Research Committee in this Agreement, the issue may be referred
by either ExxonMobil or Symyx Tech to the Advisory Committee for resolution.
3.06 Advisory Committee. (a) Symyx and ExxonMobil shall establish
an advisory committee comprised of up to * representatives designated by each of
Symyx and ExxonMobil ("Advisory Committee") with each party's representatives
selected by that party. The Advisory Committee representatives shall be
empowered by their respective managements to (i) approve or establish metrics
used to assess progress against the Annual Program Goals and Key Program Goals,
(ii) oversee the direction of the overall relationship between ExxonMobil and
Symyx and the progress toward achieving the Annual Program Goals and Key Program
Goals, (iii) organize quarterly progress and status reports to the Executive
Committee, (iv) resolve any issues referred to it by the Research Committees,
(v) resolve any issues that arise with respect to the quality of the personnel
assigned to the Research Program; (vi) set the direction of the Research Program
within the bounds set forth in this Agreement, the Research Plans and the *
Research and Development Plan, agree upon initiation and termination of
Projects, agree upon allocation of resources for Projects and approve the
technical and royalty-bearing scope of Projects, (vii) decide upon changes in
criteria used to define Lead Materials for each Project recommended by the
appropriate Research Committee, and (viii) decide upon any other changes in
Projects recommended by the appropriate Research Committee.
(b) Either ExxonMobil or Symyx may replace one or more of its
respective Advisory Committee representatives at any time upon written notice to
the other. Each party shall ensure that its representatives on the Advisory
Committee are not exposed to the Confidential Information of the other party,
except as necessary to enable the Advisory
10
* Confidential treatment requested
Committee to perform its obligations under this Agreement or as agreed in
writing by the other party.
(c) The Advisory Committee shall meet at least annually at
mutually agreed locations and times, and members of the Advisory Committee may
participate in any such meeting in person, by telephone, or by televideo
conference. Upon consent of the Advisory Committee, other representatives of
Symyx or ExxonMobil may attend Advisory Committee meetings as observers. The
Advisory Committee shall prepare a written report of each Advisory Committee
meeting, which report shall detail the decisions reached by the Advisory
Committee on any issues referred to it by the Research Committees and provide
directions, as necessary to the Research Committees. Advisory Committee
representatives of ExxonMobil and Symyx shall be entitled to comment on, and
correct any inaccuracies in the report of each Advisory Committee meeting and,
when all representatives of the Advisory Committee are satisfied with the
report, a final report shall be issued.
(d) Decisions of the Advisory Committee shall be made by
unanimous approval. In the event the Advisory Committee is unable to decide an
issue, it may be referred by either Symyx or ExxonMobil to the Executive
Committee for resolution.
3.07 Executive Committee. (a) Symyx and ExxonMobil shall establish
an Executive Committee comprised of up to * representatives of Symyx and up to *
representatives of ExxonMobil ("Executive Committee"). Initially, the Executive
Committee will be comprised of * representing Symyx and * representing
ExxonMobil. The Executive Committee representatives shall be empowered by their
respective managements to (a) resolve any issues referred to the Executive
Committee by the Advisory Committee and (b) manage the overall relationship
between ExxonMobil and Symyx and the progress in achieving the Annual Program
Goals and the Key Program Goals.
(b) Either ExxonMobil or Symyx may replace one or more of its
respective Executive Committee representatives, or, if appropriate, add a new
representative, at any time upon written notice to the other.
(c) The Executive Committee shall meet as necessary at
mutually agreed locations and times, and members of the Executive Committee may
participate in any such meeting in person, by telephone, or by televideo
conference. Upon consent of the Executive Committee, other representatives of
Symyx or ExxonMobil may attend Executive Committee meetings as observers. The
Executive Committee shall prepare a written report of each Executive Committee
meeting, which report shall detail the decisions reached by the Executive
Committee on any issues referred to it by the Advisory Committee and provide
directions, as necessary to the Advisory Committee. Executive Committee
representatives of ExxonMobil and Symyx shall be entitled to comment on, and
correct any inaccuracies in, the report of each Executive Committee meeting and,
when all representatives of the Executive Committee are satisfied with the
report, a copy will be provided to each representative of the Advisory
Committee.
11
* Confidential treatment requested
(d) Decisions of the Executive Committee shall be made by
unanimous approval. In the event the Executive Committee is unable to decide any
issue with respect to the direction or conduct of the Research Program,
ExxonMobil shall have the right to make a final determination on the course of
action (provided that such determination may not require Symyx to devote
resources beyond that contemplated by this Agreement).
3.08 Annual Reviews. Beginning on or about *, and each year
thereafter during the Research Program Term, a joint ExxonMobil-Symyx team shall
present to the Advisory Committee and the Executive Committee an evaluation of
progress made against the Annual Program Goals and Key Program Goals during the
previous twelve (12) months.
ARTICLE 4
INTELLECTUAL PROPERTY AND LICENSES
4.01 Ownership.
(a) All * shall solely be owned by ExxonMobil or its Designee,
except that (i) Symyx shall solely own *, and (ii) ExxonMobil or its Designee
and Symyx shall jointly own * resulting from any Research Project in the * Field
or otherwise directed to * ("* Technology").
(b) Symyx shall solely own all *.
(c) Inventions resulting from Independent Research shall be
owned as set forth in Section 2.04.
4.02 Notice of Inventions. Symyx and ExxonMobil or its Designee
shall report to the respective Research Committee for a Project all inventions
relating to Lead Materials or Program Technology made as part of performing the
Research Program. Prior to selection of the Royalty-Bearing Projects pursuant to
Section 8.07, ExxonMobil or its Designee shall disclose to Symyx all inventions
relating to Derivative Materials. After selection of the Royalty-Bearing
Projects, ExxonMobil or its Designee shall disclose to Symyx all inventions
relating to Derivative Materials derived from Lead Materials identified by Symyx
for use in the *, but only until expiration or termination of the applicable
royalty obligation.
4.03 Licenses to ExxonMobil.
4.03.1 Inside the ExxonMobil Exclusive Fields. Subject to the
terms and conditions of this Agreement, Symyx grants to ExxonMobil an
irrevocable, *(other than pursuant to Section 8.07), perpetual license
to utilize Symyx Confidential Information in connection with making,
having made, using, selling, offering for sale, importing and exporting
Products or Program Technology and licensing Products or Program
Technology within the scope of the ExxonMobil Exclusive Fields. In
addition, Section 4.16 of this Agreement contains provisions providing
immunity with respect to Symyx patents in the ExxonMobil Exclusive
Fields. Further, notwithstanding Section 4.01(a)(ii), ExxonMobil or its
Designee shall have the *right to practice, license and otherwise
12
* Confidential treatment requested
exploit * Technology in the * Field and for * applications within the
scope of the Exclusive Fields, subject only to the royalty obligations
of this Agreement. To the extent required by the laws of any particular
country, Symyx will at the request of ExxonMobil or its Designee,
consent to any license granted by ExxonMobil or its Designee to a Third
Party to practice * Technology in the * Field and for * applications
within the scope of the ExxonMobil Exclusive Fields, and in such event
Symyx shall receive no compensation for such consent other than
compensation due to Symyx pursuant to the royalty obligations of this
Agreement.
4.03.2 Outside the ExxonMobil Exclusive Field, but Inside the
ExxonMobil Business Areas. Notwithstanding anything in this Agreement
to the contrary, no rights are granted hereunder to ExxonMobil or its
Affiliates with respect to * applications outside of the * Field,
provided, however, that ExxonMobil shall have the *right to use Program
Technology generated in the * Field for * Products within the
ExxonMobil Business Areas, including the right to sublicense. Further,
incidental operations (i.e., operations that do not exceed *of the
annual production volume for a * Product) by ExxonMobil or its
Affiliates or Licensees outside of the * Field that occur in connection
with activities necessary for the development, manufacture and sale of
a * Product in the * Field shall not be deemed to infringe the *rights
of Symyx pursuant to Section 4.05.1 or to violate any of ExxonMobil's
obligations under this Agreement.
4.03.3 Symyx Proprietary Fields. On written request from
ExxonMobil, Symyx agrees to consider, subject to its obligations to
Third Parties and other business obligations, granting ExxonMobil, or
any ExxonMobil Affiliate, an irrevocable, worldwide royalty-bearing
license and/or licensing rights to commercially exploit any Program
Technology in specific areas of interest to ExxonMobil or any
ExxonMobil Affiliate within the Symyx Proprietary Fields. The payments
to Symyx for any such license shall be calculated as set forth in
Exhibit L or Exhibit O as applicable.
4.04 Extensions and Sublicenses. Subject to the terms and
conditions of this Agreement, ExxonMobil shall have the right to extend the
rights granted in Sections 4.01 and 4.03 above to Affiliates of ExxonMobil,
provided that the terms of each such license extension shall not be inconsistent
with the terms of this Agreement. It is understood that any such license
extension shall be subject and subordinate to the terms and conditions of this
Agreement, and that ExxonMobil shall remain responsible for all applicable
financial and other obligations under this Agreement for each such Affiliate to
which it extends such rights, including without limitation license payments due
to Symyx hereunder with respect to Net Sales or Use of Products. Subject to the
terms and conditions of this Agreement, ExxonMobil and Affiliates of ExxonMobil
to which ExxonMobil has extended sublicensing rights shall also have the right
to grant sublicenses under the rights granted in Section 4.01 and Section 4.03.1
above to one or more Third Parties, provided that any revenue received from such
a sublicensee for such grant shall be distributed in accordance with Exhibits L
or O of this Agreement, as applicable. ExxonMobil shall provide notice to Symyx
regarding such licenses.
4.05 Licenses to Symyx.
13
* Confidential treatment requested
4.05.1 Outside of the ExxonMobil Business Areas.
Notwithstanding Section 4.01(a)(ii), Symyx shall have the *right to
practice, license and otherwise exploit * Technology for all *
applications outside the * Field. To the extent required by the laws of
any particular country, ExxonMobil will, at Symyx's request, consent to
any license granted by Symyx to a Third Party to practice * Technology
outside the * Fields, and in such event, ExxonMobil shall receive no
compensation for such consent. Further, ExxonMobil grants to Symyx an
irrevocable * license, with the right to sublicense, under ExxonMobil's
interest in the Program Technology, for all purposes that are outside
of the ExxonMobil Business Areas. Notwithstanding the above grant, no
rights are granted to Symyx hereunder in the Symyx Proprietary Field
number * in Exhibit E with respect to *, and ExxonMobil and its
Affiliates shall have the * right to practice Program Technology within
the scope of Symyx Proprietary Field number * in Exhibit E with respect
to *.
4.05.2 Inside the ExxonMobil Business Areas, but Outside the
ExxonMobil Exclusive Fields. Notwithstanding Section 4.01 and Section
4.05.1, Symyx shall have irrevocable, * rights, with the right to
sublicense, under Program Technology, for all purposes in the
ExxonMobil Business Areas, but outside the ExxonMobil Exclusive Fields.
4.05.3 Use of Information. Subject to the provisions of
Article 11, Section 4.15 and any restrictions in Exhibit H, Symyx may
utilize information and data generated in the Research Program outside
the scope of the ExxonMobil Exclusive Fields, provided that no right is
granted hereunder to utilize Confidential Information of ExxonMobil or
its Affiliates.
4.05.4 ExxonMobil Proprietary Materials. Nothing in this
Agreement shall be interpreted or construed as granting to Symyx any
license or other rights (except the right to receive royalties as
specified in Section 8.07 and Exhibits L and O) with respect to any
ExxonMobil Proprietary Material, unless such ExxonMobil Proprietary
Material has been modified by Symyx so as to become a Novel Material,
in which case Symyx shall have the same rights to such Novel Material
as it has under this Agreement to all other Novel Materials.
4.06 Material Supply. It is the intention of the parties that, if
mutually acceptable terms and conditions of supply are agreed upon, ExxonMobil
or an Affiliate of ExxonMobil will have the opportunity, but not the obligation,
to supply Novel Materials found to be useful in the * by Symyx in conducting
research, on its own or on behalf of Third Parties. In the event that Symyx is
working on a program with a Third Party outside of *, involving the possibility
of commercialization of a Novel Material, Symyx shall, subject to its
obligations to the Third Party, inform the Third Party of the availability of
such Novel Material from ExxonMobil or its Affiliates, including:
(a) provide notice to ExxonMobil as early as is practicable to
facilitate ExxonMobil's opportunity to supply such Novel Material, but without
any obligation to disclose the application or the identity of the Third Party;
and
14
* Confidential treatment requested
(b) inform said Third Party that ExxonMobil or an Affiliate of
ExxonMobil may be able to supply developmental quantities of such Novel Material
(i.e. for feasibility testing, etc.); and
(c) inform said Third Party that ExxonMobil or an Affiliate of
ExxonMobil may be able to supply commercial quantities of such Novel Material.
In the event that Symyx itself wishes directly to
commercialize a Novel Material (i.e. not by license to a Third Party, or not in
connection with a collaboration with a Third Party) discovered pursuant to the
Research Program for use outside of *, Symyx shall provide written notice to
ExxonMobil, but without any obligation to disclose the application, and
ExxonMobil shall have a right of negotiation to manufacture and supply, or have
manufactured and supplied by, or on behalf of, an Affiliate of ExxonMobil, such
Novel Material on commercially reasonable terms, without obligation to reach
agreement. To exercise this right, ExxonMobil shall give written notice to Symyx
within * days of ExxonMobil's receipt of Symyx' notice and the negotiations
shall commence promptly in good faith and continue for a period not to exceed *
days from the giving of such notice by ExxonMobil. If ExxonMobil and Symyx do
not reach agreement within such * period, Symyx shall have no further
obligations to ExxonMobil or its Affiliates under this Section 4.06.
In the event a Third Party potential customer approaches
ExxonMobil or an ExxonMobil Affiliate to supply, or ExxonMobil or an ExxonMobil
Affiliate wishes to supply to a Third Party, a Novel Material for evaluation
outside of * (i.e. where Symyx controls such rights pursuant to Section 4.01 or
Section 4.05), ExxonMobil shall notify Symyx and, subject to Symyx' consent,
which consent shall not unreasonably be withheld, and subject to Symyx'
then-existing obligations to Third Parties, ExxonMobil or such ExxonMobil
Affiliate shall be permitted to supply samples of said Novel Material for
evaluation by said Third Party. In the event that said Third Party subsequently
requests ExxonMobil or an Affiliate of ExxonMobil to supply commercial
quantities of said Novel Material, Symyx agrees, subject to its obligations to
Third Parties, to negotiate in good faith with ExxonMobil a payment bearing
license arrangement whereby ExxonMobil or an Affiliate can supply such potential
customer with such Novel Material.
4.07 Symyx Research. Notwithstanding the licenses and rights
granted in this Article 4, Symyx shall retain the right to make and use Lead
Materials, other than ExxonMobil Proprietary Materials, synthesized or
identified in the Research Program, and use or practice any processes or methods
developed by or on behalf of Symyx in the course of performing the Research
Program, for its own internal research solely in developing Combinatorial
Chemistry, provided such research does not conflict with Symyx' obligations to
ExxonMobil pursuant to this Agreement.
4.08 Immediate Vesting. All rights and licenses granted pursuant to
this Article 4 shall vest immediately when the relevant invention is made, the
relevant information, data or material is generated and/or the relevant Material
is produced during the Research Program.
15
* Confidential treatment requested
4.09 Limited Use. (a) Except as expressly provided in this
Agreement, and subject to Section 4.05.4, Symyx shall not use or sell, or
authorize the use or sale of, Program Technology, or any Lead Material
synthesized or identified in the Research Program, except in relation to the
manufacture, use, or sale of Products outside of the ExxonMobil Exclusive
Fields.
(b) Except as expressly provided in this Agreement, ExxonMobil
and its Affiliates to which rights have been extended under this Agreement shall
not use or sell, or authorize the use or sale of, Program Technology, or any
Agreement Material, except in relation to the manufacture, use or sale of
Products and Program Technology within the ExxonMobil Exclusive Fields or
ExxonMobil Business Areas in accordance with the rights provided for in Section
4.01 and the license granted by Symyx in Section 4.03 (and subject to the
license granted to Symyx in Section 4.05); provided, however, that the
restriction set forth in this Section 4.09(b) shall not apply to any Agreement
Material which comprises an ExxonMobil Proprietary Material that has not been
modified by Symyx so as to become a Novel Material.
4.10 Third Party Rights. Symyx is in the business of conducting
materials discovery, research, and development with Third Parties, and Symyx
will continue to grant Third Parties rights to acquire licenses related to
compounds and materials derived from such research. Even if Symyx complies with
its obligations under this Agreement, compounds provided to Third Parties in the
course of Symyx' other business activities may result in Third Party patent
applications and patents, including patent applications and patents owned by
such Third Parties, or owned jointly by Symyx and such Third Parties, and
license rights, that could conflict with patent applications and patents and
license rights hereunder. Except to the extent that ExxonMobil or an ExxonMobil
Affiliate is damaged as a proximate result of a material breach by Symyx of
Section 2.03 or Article 11 of this Agreement, Symyx shall have no liability to
ExxonMobil or its Affiliates with respect to any such conflict.
4.11 Patent Prosecution. (a) Except as otherwise provided in this
Agreement, ExxonMobil or its Designee and Symyx shall each be responsible, in
its discretion and at its sole expense, for preparing, filing, prosecuting and
maintaining patent applications and patents relating to the inventions conceived
or reduced to practice as part of the Research Program that are owned solely by
that party as described in Section 4.01, and for conducting any interferences,
re-examinations, reissues, oppositions or requests for patent term extension, or
governmental equivalents thereto. Subject to ExxonMobil's right to maintain
Novel Process Technology as a trade secret, if ExxonMobil has not filed any U.S.
patent application that would be owned solely by it as described in Section 4.01
within * after such invention was reported to the Research Committee (but in no
event less than * prior to any applicable patent application bar date),
ExxonMobil shall so notify Symyx in writing and Symyx shall then notify
ExxonMobil in writing if it desires to file a U.S. patent application with
respect to such invention. If ExxonMobil has not filed a U.S. patent application
within * of such notice from Symyx, Symyx shall have the right to file and
prosecute a U.S. patent application with respect to such invention. Further, if
ExxonMobil does not prosecute or maintain, or conduct such other activities
described above (other than preparing and filing), with respect to any U.S.
patent or U.S. patent application owned solely by it as described in Section
4.01, ExxonMobil shall so notify Symyx in writing and Symyx will have the right,
in its discretion, to assume such activities at its own expense. In
16
* Confidential treatment requested
the event that Symyx assumes activities pursuant to the preceding three
sentences, ownership and rights to any resulting patent will be governed by the
provisions of this Article 4.
(b) ExxonMobil or its Designee shall have the initial
responsibility, in its discretion and at its sole expense, for preparing,
filing, prosecuting and maintaining patent applications and patents with respect
to * Technology that are jointly owned by ExxonMobil and Symyx as described in
Section 4.01(a)(ii), and for conducting any interferences, re-examinations,
reissues, oppositions or requests for patent term extension, or governmental
equivalents thereto, provided that ExxonMobil shall give Symyx a reasonable
opportunity to review all such patent applications before filing and will make
all modifications and/or additions to such applications, including the claims
thereof, as are reasonably requested by Symyx. Further, if ExxonMobil or its
Designee has not filed a U.S. patent application on a jointly-owned invention
within * after such invention was reported to the Research Committee (but in no
event less than * prior to any applicable patent application bar date),
ExxonMobil shall so notify Symyx in writing and Symyx shall then notify
ExxonMobil in writing if it desires to file a U.S. patent application with
respect to such invention. If ExxonMobil has not filed a U.S. patent application
within * of such notice from Symyx, Symyx shall have the right to file and
prosecute a U.S. patent application with respect to such invention, provided
that Symyx shall give ExxonMobil or its Designee a reasonable opportunity to
review all such patent applications before filing and will make all
modifications and/or additions to such applications, including the claims
thereof, as are reasonably requested by ExxonMobil or its Designee. Ownership
and rights to any patent resulting from an application filed under this Section
4.11(b) will be governed by the provisions of this Article 4. Further, if the
party that filed a particular application elects to abandon the application or
any resulting patent, such party shall give the other party reasonable notice
thereof, and the other party may elect to assume such activity. In the event *
Technology arises in connection with any Research Project not in the * Field,
claims with respect thereto shall be filed in separate patent applications
pursuant to this Section 4.11(b).
(c) Except as provided in Section 4.12, ExxonMobil shall have
no obligation to coordinate foreign patent filings with Symyx with respect to
inventions owned solely by ExxonMobil pursuant to Section 4.01 or to permit
Symyx to take over filing, prosecution, and/or maintenance of any foreign patent
application or foreign patent. Similarly, except as provided in Section 4.12,
Symyx shall have no obligation to coordinate foreign patent filings with
ExxonMobil with respect to inventions owned solely by Symyx pursuant to Section
4.01 or to permit ExxonMobil to take over filing, prosecution, and/or
maintenance of any such foreign patent application or foreign patent. With
respect to inventions that are jointly owned by ExxonMobil or its Designee and
Symyx pursuant to Section 4.01, filing, prosecution, and maintenance of foreign
patent applications shall be the initial responsibility of the party that filed
the corresponding U.S. patent application, provided that the other party shall
have a reasonable opportunity to review and comment with respect thereto;
further, if the party having the initial responsibility for filing, prosecution,
or maintenance of a particular foreign patent application or patent elects not
to proceed therewith, such party shall give the other party reasonable notice
thereof, and the other party may elect to assume such responsibility.
17
* Confidential treatment requested
(d) Nothing contained in this Agreement shall obligate
ExxonMobil or its Designee or Symyx to appeal adverse patent office or judicial
decisions with respect to patents, and if no such appeal is taken, such adverse
decision shall be deemed to be a final decision for purposes of this Agreement.
4.12 Cooperation in Patent Filing. (a) ExxonMobil or its Designee
and Symyx shall prepare patent applications consistent with the manner in which
ownership of inventions is allocated pursuant to Section 4.01. ExxonMobil and
Symyx shall make simultaneous filings of patent applications to the extent
necessary to prevent either party's patents from becoming prior art to the
other's, and shall use reasonable efforts to keep each other informed as to the
status of patent matters described in this Article 4, including by providing the
other the opportunity to review and comment on patent application drafts a
reasonable time in advance of applicable filing dates, and providing the other
party with copies of any substantive documents that such party receives from
applicable patent offices regarding applications for any Program Patent,
promptly after receipt, including notice of all official actions, interferences,
reissues, re-examinations, oppositions, potential litigation, or requests for
patent term extensions. ExxonMobil or its Designee and Symyx shall each
reasonably cooperate with and assist the other at its own expense in connection
with such activities, at the other party's request.
(b) The Advisory Committee, either directly or through a
patent committee designated by the Advisory Committee, will (i) facilitate
communication between the parties regarding patents and patent applications
arising from inventions made as part of the Research Program, and (ii) discuss
and provide advice on patent strategy related to such patent applications.
(c) The party responsible for filing and prosecuting patent
applications pursuant to Section 4.11 will solely determine the content and
scope of any application covering an invention made under this Agreement
although, with respect to applications pursuant to Section 4.01(a) being filed
and prosecuted by ExxonMobil or its Designee, Symyx shall have the right to make
recommendations to ExxonMobil as to the content and scope of any claims directed
*s. However, ExxonMobil or its Designee shall not be obligated to accept such
recommendations. In the event ExxonMobil or its Designee does not accept such
recommendations, Symyx shall have the right to file a separate patent
application or applications with respect to claims solely applicable * pursuant
to Section 4.01, and in such event the parties shall coordinate such patent
filings pursuant to the provisions of this Section. ExxonMobil or its Designee
will incur no liability to Symyx for any patent filing, prosecution, or
maintenance decision made by ExxonMobil or its Designee regarding a Program
Patent owned by ExxonMobil or its Designee. Symyx will incur no liability to
ExxonMobil or its Designee for any patent filing, prosecution, or maintenance
decision made by Symyx regarding a Program Patent owned by Symyx. ExxonMobil or
its Designee and Symyx shall also have the option to have outside counsel
prepare and prosecute Program Patents.
18
* Confidential treatment requested
4.13 Enforcement.
4.13.1 Notice. ExxonMobil and Symyx each shall promptly notify
the other in writing if it becomes aware of any actual or threatened
commercially material infringement of the Program Patents by a Third
Party.
4.13.2 Program Patents Owned Solely by ExxonMobil. ExxonMobil
or its Designee shall have the right, but not the obligation, at its
sole cost and expense, to take appropriate legal action to enforce any
Program Patents owned solely by ExxonMobil or its Designee pursuant to
Section 4.01 against any infringement by a Third Party within *. Symyx
will have no right, unless specifically authorized by ExxonMobil, to
take legal action to enforce any Program Patents owned solely by
ExxonMobil or its Designee pursuant to Section 4.01 against any
infringement within *. Symyx shall have the right, but not the
obligation, at its sole cost and expense, to take appropriate legal
action to enforce any Program Patents owned solely by ExxonMobil or its
Designee pursuant to Section 4.01 against any infringement by a Third
Party within *. ExxonMobil and its Designee will have no right, unless
specifically authorized by Symyx, to take legal action to enforce any
Program Patents against any infringement within *. With respect to any
legal action that Symyx has the right to initiate under this Section
4.13.2, ExxonMobil or its Designee will provide reasonable cooperation
and assistance, provided that ExxonMobil or its Designee may, at its
sole option, cede to Symyx sole ownership of the relevant Program
Patent and in such event ExxonMobil and its Designee shall have no
further obligations hereunder with respect to such legal action.
4.13.3 Program Patents Owned Solely By Symyx. Symyx shall have
the right, but not the obligation, at its sole cost and expense, to
take appropriate legal action to enforce any Program Patents owned
solely by Symyx pursuant to Section 4.01 against any infringement by a
Third Party. ExxonMobil will have no right, unless specifically
authorized by Symyx, to take legal action to enforce any Program
Patents owned solely by Symyx against any infringement by a Third
Party.
4.13.4 Program Patents Owned Jointly by Symyx and ExxonMobil.
ExxonMobil or its Designee shall have the right, but not the
obligation, at its sole cost and expense, to take appropriate legal
action to enforce any Program Patents owned jointly by ExxonMobil or
its Designee and Symyx pursuant to Section 4.01 against any
infringement by a Third Party within *, and Symyx shall have no right
to do so unless specifically authorized by ExxonMobil or its Designee.
Symyx shall have the right, but not the obligation, at its sole cost
and expense, to take appropriate legal action to enforce any Program
Patents owned jointly by ExxonMobil or its Designee and Symyx pursuant
to Section 4.01 against any infringement by a Third Party outside *,
and ExxonMobil and its Designee shall have no right to do so unless
specifically authorized by Symyx. With respect to any legal action
initiated under this Section 4.13.4, the other party will provide
reasonable cooperation and assistance to the initiating party, provided
that the other party may, at its sole option, cede to the initiating
party sole ownership of the relevant Program
19
* Confidential treatment requested
Patent and in such event the other party shall have no further
obligations hereunder with respect to such legal action.
4.13.5 Cooperation; Costs and Recoveries; Settlements.
ExxonMobil or its Designee and Symyx shall use commercially reasonable
efforts to cooperate and render such assistance in the enforcement
activities described in this Section 4.13 as the enforcing party may
reasonably request, including being named or joined as a party to such
enforcement activities to the extent required by law. Costs of
maintaining any such action and damages recovered therefrom shall be
paid by and belong to the party bringing the action; provided, however,
that with respect to any Program Patent having claims that cover a
royalty-bearing Product, any recovery by ExxonMobil or its Affiliates
(after deduction of withholding taxes, if any) under Section 4.13.2 in
excess of ExxonMobil's and its Affiliates' actual cost and expenses
shall be divided such that Symyx receives a percentage of such recovery
equal to the percentage of Added Value, as defined in Exhibit L or
Exhibit O and determined as set forth in Exhibit L or Exhibit O,
whichever is applicable, that Symyx is entitled to receive for the
relevant royalty-bearing Product.
4.14 Third Party Claims of Infringement. If the manufacture, use,
or sale of any Program Technology pursuant to this Agreement results in any
claim, suit, or proceeding alleging patent infringement against Symyx or
ExxonMobil (or their Affiliates or Licensees), such party shall promptly notify
the other party hereto in writing setting forth the facts of such claims in
reasonable detail. Each party agrees to use commercially reasonable efforts to
render assistance to the other party in defending such claims of infringement as
the defendant may reasonably request. The defendant shall have the * right and
obligation to defend and control the defense of any such claim, suit, or
proceeding, at its own expense, using counsel of its own choice; provided,
however, it shall not enter into any settlement that admits or concedes that any
Program Patent is invalid or unenforceable without the prior written consent of
the other party, which shall not be unreasonably withheld. The defendant shall
keep the other party hereto reasonably informed of all material developments in
connection with any such claim, suit, or proceeding. Additionally, Symyx will
notify ExxonMobil of any claim, suit, or proceeding alleging patent infringement
against Symyx relating to Combinatorial Chemistry activities performed by Symyx
under this Agreement.
4.15 ExxonMobil Background Technology. Except as necessary to
conduct the Research Program, no licenses are granted hereunder to Symyx or any
other party to ExxonMobil Background Technology.
4.16 Limited Immunity with Respect to Symyx Patents. In furtherance
of the rights granted to ExxonMobil in Sections 4.01 and 4.03, and in
recognition of the license royalties payable by ExxonMobil pursuant to Section
8.07, Symyx and its Affiliates shall not, for so long as ExxonMobil is not in
breach pursuant to Section 14.06 with respect to any payment due to Symyx
hereunder, and solely to the extent necessary for ExxonMobil and its Affiliates
to engage in Net Sales or Use of Products or Program Technology and the grant of
licenses to Licensees to make, have made, use, sell, offer for sale, and import
Products or Program Technology, (a) bring any claim or action against ExxonMobil
or its Affiliates or their Licensees based on or asserting
20
* Confidential treatment requested
that the Net Sales or Use of Products or Program Technology in the ExxonMobil
Exclusive Fields violates or infringes any patent controlled by Symyx or (b)
bring any claim or action against ExxonMobil or its Affiliates or Licensees
based on or asserting that the grant of licenses to Licensees to make, have
made, use, sell, offer for sale, and import Products or Program Technology in
the ExxonMobil Exclusive Fields violates or infringes any patent controlled by
Symyx.
ARTICLE 5
SOFTWARE
5.01 Staffing. Symyx DTools shall provide FTE personnel to deploy
the Software within ExxonMobil, EMCC, and other Majority Owned Affiliates
designated by ExxonMobil in accordance with a Software Deployment Plan attached
hereto as Exhibit M, as follows: (a) * during the period ending on *; and (b) an
average of * FTEs per year beginning *, through the end of the Software License
Term. Notwithstanding any other provision of this Agreement, Symyx shall not,
without its consent, be required to perform activities other than in accordance
with the Software Deployment Plan or utilize a number of FTEs in excess of the
number of FTEs specified above. Symyx DTools shall assign staff to the Software
Deployment Plan consistent with the quality and experience of the staff Symyx
assigns to internal and Third Party software efforts; provided that ExxonMobil
shall have the right to require Symyx DTools to correct deficiencies in the
quality and experience of the Software FTEs. During the time period set forth in
this Section, the key personnel set forth in Section I2 of Exhibit I shall have
responsibility within Symyx for those Key Program Goals associated with the
Software Deployment Plan and shall be available for Software deployment
activities for at least the amount of time necessary to effectively carry out
such responsibility, provided that such key personnel remain Symyx employees
during such time. Symyx shall use reasonable efforts to retain such key
personnel during such period of time, consistent with its employment policies,
and if such individuals are no longer employed at Symyx during the Software
License Term, Symyx shall use reasonable efforts to replace such individuals
with personnel of comparable skills. Changes to the key personnel set forth in
Section I2 of Exhibit I may be made from time to time by the Advisory Committee.
5.02 Software License. Symyx shall provide the Software to
ExxonMobil (and to EMCC and other Majority Owned Affiliates designated by
ExxonMobil) on or before the beginning of the Software License Term, and hereby
grants to ExxonMobil a worldwide, nonexclusive, nontransferable,
nonsublicensable (except as provided in Section 5.10) right to install and use
an unlimited number of copies of the Software, in object code format, during the
Software License Term, solely for ExxonMobil's Internal Activities. Symyx does
not provide, and ExxonMobil and its Majority Owned Affiliates shall be
responsible to secure or use their own Oracle database and operating system and
appropriate licenses thereto. ExxonMobil will report to Symyx the number of
users of the Software, within * at the request of Symyx, but not more frequently
than on a * basis.
21
* Confidential treatment requested
5.03 Developer's Kit Software License. Symyx shall provide the
Developer's Kit Software to ExxonMobil (and to EMCC and other Majority Owned
Affiliates designated by ExxonMobil) on or before the beginning of the Software
License Term, and Symyx hereby grants to ExxonMobil a worldwide, nonexclusive,
nontransferable, nonsublicensable (except as provided in Section 5.10) right to
install and use an unlimited number of copies of the Developer's Kit Software,
in object code format, during the Software License Term, to create Software
Customizations solely for ExxonMobil's Internal Activities. With respect to any
Software Customizations (and the intellectual property rights therein) created
by ExxonMobil using the Developer's Kit Software, ExxonMobil will either (a)
rely solely on trade secret protection, or (b) grant to Symyx a nonexclusive,
worldwide, perpetual, irrevocable, paid-up, transferable, sublicensable right to
make, have made, modify, copy, create derivative works based on, use, offer to
sell, sell, export, and import any Software Customizations as to which
ExxonMobil files a patent application. ExxonMobil may, at its option, notify
Symyx of any Software Customizations; provided, however, that in the event
ExxonMobil elects (b) above, ExxonMobil shall provide Symyx the opportunity to
review and comment on patent application drafts at least * prior to filing or
prosecuting any application for a patent with respect to any Software
Customization, and shall promptly notify Symyx in the event any patent publishes
or is issued with respect to any Software Customization. ExxonMobil will report
to Symyx the number of users of the Developer's Kit Software, within * days at
the request of Symyx, but not more frequently than on a * basis.
5.04 Sample Code. ExxonMobil may use and modify the source code
version of those portions of the Software and the Developer's Kit Software that
are identified in the documentation as sample code ("Sample Code"). ExxonMobil
may not distribute the Sample Code, or any modified version of the Sample Code,
in source code form, except as provided in Section 5.10.
5.05 Software Upgrades. Subject to payment by ExxonMobil of the
applicable payments pursuant to Article 8, Symyx will provide ExxonMobil and its
Majority Owned Affiliates to which rights have been extended pursuant to Section
5.10 with all Software Upgrades during the Software License Term.
5.06 Limited License. By virtue of this Article, ExxonMobil
acquires only the nonexclusive rights to operate the Software, Developer's Kit
Software, and Software Customizations as specified in this Article 5 and to make
copies of the Software and the Developer's Kit Software as necessary in
connection with ExxonMobil's and its Majority Owned Affiliates' use thereof. All
other rights in the Software and the Developer's Kit Software, and all title and
interest in the Software and the Developer's Kit Software, or rights in patents,
copyrights, and trade secrets in the Software and the Developer's Kit Software,
including the copies of the Software and the Developer's Kit Software delivered
to ExxonMobil, EMCC, and other Majority Owned Affiliates, shall at all times
remain the property of Symyx. The features of the graphical user interface of
the Software and the Developer's Kit Software ("User Interface"), including,
without limitation, icons, menu and screen designs, screen layouts, and command
and screen sequence, are proprietary to Symyx and are only disclosed to
ExxonMobil under a condition of confidentiality. ExxonMobil shall not create
software programs incorporating the
22
* Confidential treatment requested
User Interface or any part thereof. The User Interface is a copyrighted work of
Symyx and ExxonMobil shall not challenge Symyx' copyright in and to the User
Interface.
5.07 (a) Software Warranties. Symyx represents that (i) the
Software and the Developer's Kit Software (including the Sample Code) have been
designed to facilitate Combinatorial Chemistry and (ii) to Symyx' knowledge, as
of the Effective Date, the Software and/or the Developer's Kit Software or use
thereof in accordance with the Software Specifications do not infringe any
patents, copyrights or other intellectual property rights of any Third Party
directed specifically to *, and warrants that during the Software License Term,
the Software and the Developer's Kit Software (including the Sample Code) will
conform in all material respects with the Software Specifications attached
hereto as Exhibit U. The Software Specifications may be changed from time to
time by mutual written agreement of the Advisory Committee. Except as provided
in the foregoing sentences of this Section 5.07, the Software and the
Developer's Kit Software (including the Sample Code) are provided without
warranty of any kind. Symyx does not warrant that the Software or the
Developer's Kit Software (including the Sample Code) will meet ExxonMobil's or
its Majority Owned Affiliates' requirements or that the operation of the
Software or the Developer's Kit Software (including the Sample Code) will be
uninterrupted or error free or that the Software or the Developer's Kit Software
(including the Sample Code) will be compatible with other hardware or software
that ExxonMobil or its Majority Owned Affiliates may elect to operate.
(b) Software Indemnity.
(i) In the event any legal proceedings are brought *
against ExxonMobil or its Majority Owned Affiliates claiming that the
Software or the Developer's Kit Software delivered to ExxonMobil or an
ExxonMobil Majority Owned Affiliate pursuant to this Article 5
infringes a Third Party's trade secret or a claim of a Third Party's
patent issued on or before the date such Software or the Developer's
Kit Software is delivered hereunder, Symyx shall defend the same at its
expense and pay any costs, damages, and attorney fees finally awarded
or negotiated as a result of settlement or judgment against ExxonMobil
or such ExxonMobil Majority Owned Affiliate, provided that ExxonMobil
or such Majority Owned Affiliate gives Symyx prompt written notice
within * of such claim against it and cooperates fully with Symyx in
providing authority, information, and reasonable assistance to enable
Symyx at its option to settle or defend such claim. ExxonMobil shall
have the right, at its expense, to participate in such defense. Symyx
shall have no right to settle or compromise the litigation in a manner
that would * without the consent of ExxonMobil and ExxonMobil or its
Majority Owned Affiliates shall have no right to settle or compromise
the litigation in a manner that would *. Symyx shall have no liability
for any claim hereunder based on the use of the Software or the
Developer's Kit Software with any other hardware or software if such
claim would have been avoided had such other hardware or software not
been used with such Software or the Developer's Kit Software.
(ii) In the event any such legal proceeding is
brought, Symyx may, at its option, replace or modify the Software or
the Developer's Kit Software or parts thereof to
23
* Confidential treatment requested
render it non-infringing, or procure for ExxonMobil or such Majority
Owned Affiliate the right to continue using such Software or the
Developer's Kit Software, provided that such replacement or
modification does not substantially reduce the functionality thereof,
and further provided that this Section 5.07(b)(ii) shall not limit
Symyx' obligations pursuant to Section 5.07(b)(i). Symyx' total
liability with respect to this Section 5.07 (b) shall be limited * in
the aggregate.
(iii) In the event any such legal proceeding results
in ExxonMobil or any of its Affiliates being required to pay royalties
or damages to such Third Party with respect to any Product from a
Royalty-Bearing Project, then ExxonMobil shall have the right to
immediately re-open the royalty determination with respect to such
Product from a Royalty-Bearing Project in accordance with Exhibit L or
Exhibit O, as applicable, with such re-opener limited to considering
the effect of the royalties or damages required to be paid as a result
of such legal proceeding.
(c) Software Disclaimer. EXCEPT AS EXPRESSLY SET FORTH IN THIS
ARTICLE 5, SYMYX MAKES AND EXXONMOBIL RECEIVES NO OTHER WARRANTIES OR
CONDITIONS, EXPRESS, IMPLIED, STATUTORY, OR OTHERWISE, IN ANY PROVISION OF THIS
AGREEMENT OR OTHER COMMUNICATION WITH EXXONMOBIL WITH RESPECT TO THE SOFTWARE OR
THE DEVELOPER'S KIT SOFTWARE (INCLUDING THE SAMPLE CODE), AND SYMYX SPECIFICALLY
DISCLAIMS ANY IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE.
5.08 Source Code. The parties shall enter into a source code escrow
agreement upon execution of this Agreement providing that, in the event Symyx is
(a) liquidated, dissolved, or ceases to carry on its business, during the
Software License Term, or (b) otherwise becomes unwilling or unable to support
the Software or the Developer's Kit Software by failure to extend to ExxonMobil
support hereunder or Software Upgrades in accordance with Section 5.05, where
ExxonMobil can demonstrate that access to the source code is reasonably
necessary for ExxonMobil's continued use of the Software or the Developer's Kit
Software as provided in this Article 5, and provided that ExxonMobil is not in
default under this Article 5, a copy of the Software or the Developer's Kit
Software source code shall be provided to ExxonMobil solely for the purpose of
operating, maintaining and enhancing (either by or on behalf of ExxonMobil) the
Software or the Developer's Kit Software as provided in this Article 5. At all
times during the Software License Term, Symyx shall ensure that the latest
versions of the Software and the Developer's Kit Software released to ExxonMobil
have been provided to the escrow agent. Symyx shall notify ExxonMobil each time
an updated version of the Software or the Developer's Kit Software is provided
to the escrow agent. ExxonMobil shall pay the escrow expenses associated with
Symyx providing its source code to the escrow agent.
5.09 Restrictions. Except pursuant to the express licenses
contained in this Agreement, ExxonMobil will not: (a) reproduce, distribute,
copy, sell, lease, license or sublicense the Software, Developer's Kit Software,
or any Software Customization; (b) use the Software, Developer's Kit Software,
or any Software Customization other than as licensed above; (c)
24
* Confidential treatment requested
attempt to, or permit a third party to, through any means, reverse engineer,
disassemble, decompile, or otherwise attempt to derive source code from the
Software or the Developer's Kit Software; (d) modify, translate, enhance, or
create derivative works based on the Software or the Developer's Kit Software
(except as permitted in Sections 5.03 and 5.04); or (e) remove any copyright,
trademark or patent notices that appear on the Software or the Developer's Kit
Software as delivered to ExxonMobil. ExxonMobil shall use commercially
reasonable efforts to prevent any Affiliate or Third Party (provided the Third
Party has gained access to the Software, Developer's Kit Software, or any
Software Customization by virtue of: i) having entered into a contract with
ExxonMobil relating to the Software, Developer's Kit Software, or any Software
Customization, or ii) having gained access to the Software, Developer's Kit
Software, or any Software Customization through the intentional act or
negligence of ExxonMobil) from engaging in any of the activities prohibited by
this Section. ExxonMobil shall assume responsibility in the event any Affiliate
or Third Party (provided the Third Party has gained access to the Software,
Developer's Kit Software, or any Software Customization by virtue of: A) having
entered into a contract with ExxonMobil relating to the Software, Developer's
Kit Software, or any Software Customization, or B) having gained access to the
Software, Developer's Kit Software, or any Software Customization through the
intentional act or negligence of ExxonMobil) engages in any of the activities
prohibited by this Section 5.09 to the same extent as if ExxonMobil had engaged
in such activities itself. Further, ExxonMobil shall ensure that access to the
Software, Developer's Kit Software, or any Software Customization shall be
limited to employees and in-house contract personnel of ExxonMobil and Majority
Owned Affiliates to which rights have been extended pursuant to Section 5.10
(and other Affiliates and Third Parties approved by Symyx in writing, with such
approval not to be unreasonably withheld) working directly with the Software,
Developer's Kit Software, or any Software Customization. Other than in carrying
out ExxonMobil's Internal Activities, ExxonMobil shall not provide access to the
Software, Developer's Kit Software, or any Software Customization to any Third
Party. Nothing herein shall be deemed to restrict ExxonMobil from disclosing
results obtained through use of the Software or any Software Customization to
any Third Party.
5.10 Right to Extend Licenses to Majority Owned Affiliates.
ExxonMobil shall have the right to extend the licenses and other rights granted
to ExxonMobil in this Article 5 to any of its Majority Owned Affiliates (but
such Majority Owned Affiliates shall have no right to grant any further
extensions), provided that ExxonMobil shall not then be in default with respect
to any of its obligations to Symyx under this Article 5. Any such extension
shall be in writing and shall be accepted in writing by such Majority Owned
Affiliate. A copy of such writing shall be provided to Symyx upon request. All
of the obligations and restrictions imposed on ExxonMobil in this Agreement with
respect to the Software and the Developer's Kit Software shall apply to such
Majority Owned Affiliate to the same extent as they apply to ExxonMobil and the
operations of such Majority Owned Affiliate shall be deemed to be the operations
of ExxonMobil. ExxonMobil shall account therefor and be primarily responsible
for the performance by such Majority Owned Affiliate of all of its obligations
hereunder. A license extended under this Section shall terminate for a given
entity at the time such entity ceases to be an Majority Owned Affiliate if not
expiring or terminated sooner under the terms of this Agreement.
25
5.11 After Software License Term. In the event ExxonMobil desires
to continue the Software licenses pursuant to the terms of this Article 5
following expiration of the Software License Term, ExxonMobil shall select one
of the two license models set forth in Exhibit N to take effect after the
Software License Term, and the provisions of this Article 5 shall continue
accordingly. ExxonMobil shall notify Symyx as to its election no later than *
prior to the end of the Software License Term. In the event (a) ExxonMobil does
not elect to continue the Software licenses pursuant to the terms of this
Article 5 following the Software License Term, or (b) ExxonMobil elects to
continue the Software License pursuant to one of the two license models set
forth in Exhibit N, but terminates the license prior to the point at which it is
paid up pursuant to Exhibit N, all rights granted under this Article 5 (or
Exhibit N) to ExxonMobil shall terminate and ExxonMobil and its Majority Owned
Affiliates shall immediately discontinue all use of the Software, the
Developer's Kit Software and all Software Customizations, remove the Software,
the Developer's Kit Software and all Software Customizations from all
workstations, and deliver to Symyx all portions and copies of the Software, the
Developer's Kit Software and any Software documentation provided by Symyx that
may be in their possession (provided that the foregoing shall not affect the
licenses granted pursuant to Section 7.06). In the event that ExxonMobil elects
to continue the Software Licenses pursuant to one of the two license models set
forth in Exhibit N, and thereafter ExxonMobil makes additional license fee
payments to Symyx as provided in Exhibit N for an additional *, ExxonMobil shall
have a fully-paid, corporate-wide (limited to ExxonMobil and Majority Owned
Affiliates) license to the version of the Software and the Developer's Kit
Software covered by the license model selected by ExxonMobil, as well as a
fully-paid, corporate-wide (limited to ExxonMobil and Majority Owned Affiliates)
license to all Software Customizations pursuant to the provisions of this
Article 5. If ExxonMobil extends the Software License Term pursuant to Section
14.01.2, such Software License Term extension shall count toward the * of
additional license fees required by the preceding sentence under either of the
two license models set forth in Exhibit N.
ARTICLE 6
COMBINATORIAL CHEMISTRY LICENSE
6.01 Combinatorial Chemistry License. Symyx hereby grants to
ExxonMobil a * license under the Symyx Combinatorial Patent Rights issued as of
the Effective Date or during the Combinatorial License Term, and the Symyx
Combinatorial Know How, during the Research Program Term, including any
extension thereof pursuant to Section 14.01.2 as to which ExxonMobil is required
to make the payments set forth in Sections 8.05 and 8.06 during such extension
period (collectively, "Combinatorial License Term"), to use and make (but not to
have made except as set forth below, sell, offer for sale, import, export,
distribute or lease) Combinatorial Chemistry in the ExxonMobil Business Areas
for ExxonMobil's Internal Activities. The scope of such Combinatorial Chemistry
License during any extension period, and the amount of the payments pursuant to
Sections 8.05 and 8.06, shall be as mutually agreed by Symyx and ExxonMobil. The
license set forth in this Section specifically excludes the right to copy or
reverse engineer Symyx designed instruments or software. In the event ExxonMobil
determines to make a Combinatorial Chemistry instrument designed by ExxonMobil
pursuant to the license granted above, ExxonMobil may contract with machine
shops, foundries and the like
26
* Confidential treatment requested
(but not instrument manufacturers) for the manufacture of components parts (but
not an entire instrument) designed by ExxonMobil. In the event ExxonMobil
determines to have a Third Party make a Combinatorial Chemistry instrument
designed by ExxonMobil (an entire instrument) pursuant to the license granted
above, ExxonMobil may do so only pursuant to the following provisions: (a)
ExxonMobil shall so notify Symyx, and Symyx may provide a quotation for the sale
of such instrument to ExxonMobil; the parties shall negotiate reasonably and in
good faith the terms of such transaction, provided that neither party shall be
obligated to agree to such terms; (b) in the event the parties are unable to
reach written agreement with respect to the terms of such transaction within *
of ExxonMobil's initial request or Symyx does not wish to provide such
instrument, Symyx agrees to grant and hereby grants to ExxonMobil the right to
have a Third Party make such Combinatorial Chemistry instrument, subject to the
following provisions: (i) *; and (ii) ExxonMobil shall be responsible to Symyx
to the extent Symyx is damaged as a proximate result of a material breach by
such Third Party of the provisions of (i) above. Except as set forth in this
Section 6.01, ExxonMobil shall be the sole and exclusive owner of all
inventions, discoveries, and improvements resulting from ExxonMobil's activities
outside the Research Program pursuant to the license granted in this Section.
6.02 Non-Opposition. The license set forth in Section 6.01 shall
terminate if, during the term thereof, ExxonMobil or a Majority Owned Affiliate
to which rights have been extended pursuant to Section 6.05, directly or
indirectly, provokes, requests, or otherwise attempts to initiate a
reexamination proceeding in the United States Patent and Trademark Office with
respect to any Symyx Combinatorial Patent Rights, or files a notice of
opposition or participates in any opposition against any Symyx Combinatorial
Patent Rights in any other jurisdiction.
6.03 Disclaimer. SYMYX MAKES NO REPRESENTATIONS AND EXTENDS NO
WARRANTIES OR CONDITIONS OF ANY KIND, EITHER EXPRESS OR IMPLIED, WITH RESPECT TO
THE SYMYX COMBINATORIAL PATENT RIGHTS OR SYMYX COMBINATORIAL KNOW HOW,
INCLUDING, BUT NOT LIMITED TO, WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE, VALIDITY OF ANY SYMYX COMBINATORIAL PATENT RIGHTS OR
NONINFRINGEMENT OF THE INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES.
6.04 Extension of Term. ExxonMobil may extend the term of the
license granted pursuant to Section 6.01 on an annual basis by written notice to
Symyx at least * prior to the expiration of the Research Program Term. If
ExxonMobil elects to extend the term of such license, ExxonMobil shall pay Symyx
* for each year the license extension is in place, for a license of the same
scope as set forth in this Article 6. In the event ExxonMobil desires a license
of reduced scope, the parties shall negotiate in good faith a reduced license
fee based on the fair market value for the scope of rights desired by
ExxonMobil. After * of license extensions beyond *, ExxonMobil shall have a
fully paid-up license for the scope negotiated for the extension pursuant to the
provisions of this Article 6. For the avoidance of doubt, if ExxonMobil extends
the Research Program Term pursuant to Section 14.01.2, and ExxonMobil makes the
payments set forth in Sections 8.05 and 8.06 during such extension period, then
such Research Program Term extension shall count toward the * of license
extensions required by the preceding sentence.
27
* Confidential treatment requested
6.05 Right to Extend Licenses to Majority Owned Affiliates.
ExxonMobil shall have the right to extend the licenses and rights set forth in
this Article 6 to any of its Majority Owned Affiliates (but such Majority Owned
Affiliates shall have no right to grant any further extensions), provided that
ExxonMobil shall not then be in default with respect to any of its obligations
to Symyx under this Article 6. Any such extension shall be in writing and shall
be accepted in writing by such Majority Owned Affiliate. A copy of such writing
shall be provided to Symyx upon request. All of the restrictions set forth in
this Agreement with respect to the Combinatorial Chemistry License shall apply
to such Majority Owned Affiliate to the same extent as they apply to ExxonMobil
and the operations of such Majority Owned Affiliate shall be deemed to be the
operations of ExxonMobil. ExxonMobil shall account therefor and be primarily
responsible for the performance by such Majority Owned Affiliate of all of its
obligations hereunder. A license extended under this Section shall terminate for
a given entity at the time such entity ceases to be a Majority Owned Affiliate
if not expiring or terminated sooner under the terms of this Agreement.
ARTICLE 7
DISCOVERY TOOLS
7.01 General Principles. It is the expectation of ExxonMobil and
Symyx DTools that at ExxonMobil's request and in accordance with a mutually
agreed upon schedule, Symyx DTools shall deliver at least * Discovery Tools
Systems (excluding Incremental Add-Ons to existing Discovery Tools Systems, but
including Discovery Tools Systems being developed under the CRDLA (which will be
subject to the pricing provisions of this Article)) to ExxonMobil and its
Affiliates prior to * following the end of the Research Program Term (the "Tool
Delivery Period"). It is the expectation of ExxonMobil and Symyx DTools that the
aggregate Tools Cost for such at least * Discovery Tools Systems will be
approximately *. Symyx DTools shall use commercially reasonable efforts to
provide additional Discovery Tools Systems during the Tool Delivery Period
requested by ExxonMobil pursuant to the terms of this Agreement.
7.02 Procedure. ExxonMobil shall notify Symyx DTools at such time
as it (or an Affiliate to which ExxonMobil has extended rights pursuant to
Section 7.14) is interested in acquiring a Discovery Tools System hereunder. At
such time as the specifications for a Discovery Tools System are finalized,
Symyx DTools will provide to ExxonMobil or such Affiliate a mutually-acceptable
detailed estimate, consistent with Exhibit V, of the Tools Cost for such
Discovery Tools System. If ExxonMobil or such Affiliate elects to proceed with
acquisition of such Discovery Tools System, ExxonMobil or such Affiliate and
Symyx DTools will enter into a definitive agreement that specifies the
description of the Discovery Tools System, the anticipated Tools Price for such
system based on such detailed cost estimate, the provisions that will apply with
respect to acceptance, delivery and payment for such system, the exclusivity, if
any, applicable to such system (as set forth in Section 7.05), whether or not
such Discovery Tools System is considered to be an Incremental Add-On hereunder,
a full "System" or some fraction thereof, and any other relevant terms and
conditions. Symyx DTools shall use commercially
28
* Confidential treatment requested
reasonable efforts to deliver each Discovery Tools System within * months
following the effective date of the definitive agreement for such system.
7.02.1 Revised Cost Estimates and Notification of Cost
Overruns. During fabrication of a Discovery Tools System for ExxonMobil
or an ExxonMobil Affiliate, Symyx DTools shall provide to ExxonMobil or
such Affiliate periodic (at least quarterly) revised estimates of the
anticipated Tools Cost of such system. In the event that Symyx DTools
believes that the Tools Cost of a Discovery Tools System is likely to
exceed the original detailed cost estimate provided to ExxonMobil or
such Affiliate pursuant to Section 7.02, Symyx DTools shall provide
prompt written notice thereof to ExxonMobil or such Affiliate, together
with an estimate of the anticipated amount of the cost overrun and an
explanation of the reasons therefor. Symyx DTools shall cooperate fully
with ExxonMobil or such Affiliate and shall make all changes reasonably
requested by ExxonMobil or such Affiliate to mitigate any such cost
overrun. In the event of change orders, or changes in the design or
components of the Discovery Tools System that ExxonMobil or such
Affiliate requests and that the parties mutually approve, the parties
will negotiate appropriate adjustments to the applicable cost estimate
and pricing of the Discovery Tools System based on such changes.
7.02.2 Responsibility for Cost Overruns. ExxonMobil or its
Affiliate shall pay Symyx DTools, pursuant to Section 7.03, for a
particular Discovery Tools System, provided that the actual Tools Cost
for such system does not exceed * of the original detailed cost
estimate provided to ExxonMobil or such Affiliate pursuant to Section
7.02. If the actual Tools Cost for such system exceeds * of the
detailed cost estimate, then the excess (i.e., the amount by which the
actual Tools Cost exceeds * of the original detailed cost estimate)
shall not be subject to the relevant price multiplier set forth in
Section 7.03, and ExxonMobil or such Affiliate shall reimburse Symyx
DTools only for * of such excess. The provisions in this Section 7.02.2
are dependent on the compliance of the Discovery Tools System with the
final specifications as described in Section 7.02.
7.03 Tools Price. ExxonMobil shall pay Symyx DTools for Discovery
Tools Systems the Tools Price as follows:
For cumulative Tools Cost Tools Price payable by ExxonMobil
------------------------- ---------------------------------
*
If the cost for a particular Discovery Tools System falls into more than one of
the categories above, the Tools Price for such system shall be determined by
multiplying the portion of the cost in each category by the price multiplier for
that category. The Tools Price described in this Section 7.03 is exclusive of
federal, state, and local excise, sales, use, and similar taxes. ExxonMobil
shall be liable for and shall pay all applicable taxes (other than taxes imposed
on or measured by net income) appropriately invoiced by Symyx DTools, unless
ExxonMobil provides Symyx DTools with a properly executed tax exemption
certificate prior to delivery of an invoice setting forth any such taxes.
ExxonMobil shall not be liable for any federal, state, or local
29
* Confidential treatment requested
income tax, franchise tax, or similar tax based upon Symyx DTools' income. In
addition to the Tools Price, ExxonMobil shall bear all costs for transportation,
shipping, and insurance expenses in respect of shipment to a delivery point
designated by ExxonMobil.
7.04 Eligible Tools Systems. Symyx DTools shall transfer and
deliver to ExxonMobil pursuant to this Article 7 the following categories of
Discovery Tools: (a) Discovery Tools Systems that are commercially available and
have been previously sold by Symyx (subject to any restrictions on field of use
of such Discovery Tools System as imposed by Symyx in connection with such
previous sales by Symyx of such Discovery Tools System); (b) * workflows
utilized and/or developed within the Research Program; and (c) * workflows
developed within the Research Program that do not constitute "later generation"
versions of * workflows that were developed outside of the Research Program.
Transfer of Discovery Tools Systems other than as set forth in (a) through (c)
above may be discussed on a case-by-case basis, but ExxonMobil and Symyx DTools
have no obligation to agree upon such transfer.
7.05 Limited Exclusivity. (a) With respect to Discovery Tools
Systems substantially developed within the Research Program, ExxonMobil shall
have the right to acquire, at no additional cost, limited term exclusivity for *
Discovery Tools Systems (but not fractional Systems), according to the procedure
set forth in Sections 7.05(b) and (c) below.
(b) Symyx shall provide written notice to ExxonMobil of its
determination that the development of a particular Discovery Tools System has
been completed. Thereafter, ExxonMobil will, within * after receipt of the
written notice from Symyx, notify Symyx whether or not ExxonMobil wishes to
designate such Discovery Tools System for the limited term exclusivity provided
in Section 7.05(a) unless ExxonMobil disagrees that the development of such
Discovery Tools System is complete. In the event ExxonMobil disagrees with
Symyx' determination that the development of such Discovery Tools System has
been completed, it shall promptly notify Symyx and Symyx shall have the
opportunity to demonstrate that such Discovery Tools System performs in
accordance with the applicable Research Plan. Such Discovery Tools System shall
be deemed completed for purposes of this Section 7.05 if it performs in
accordance with the applicable Research Plan and ExxonMobil shall within *
thereafter notify Symyx whether or not ExxonMobil wishes to designate such
Discovery Tools System for the limited term exclusivity provided in Section
7.05(a).
(c) If ExxonMobil does not designate a particular Discovery
Tools System for the limited term exclusivity provided in Section 7.05(a) within
such * period, then Symyx shall thereafter be free to sell such Discovery Tools
System to Third Parties, subject only to Symyx' obligations under Section 7.13.2
of this Agreement. If ExxonMobil does designate a particular Discovery Tools
System for the limited term exclusivity provided in Section 7.05(a), ExxonMobil
shall have the exclusive right to acquire such a Discovery Tools System from
Symyx for the period of time determined as follows:
(i) ExxonMobil's right to acquire limited term
exclusivity with respect to such Discovery Tools System shall expire if
ExxonMobil has not placed a binding order
30
* Confidential treatment requested
with Symyx for purchase of such a Discovery Tools System within * after
the date ExxonMobil designated such Discovery Tools System for limited
term exclusivity.
(ii) If ExxonMobil does place a binding order with
Symyx for purchase of such a Discovery Tools System prior to expiration
of the * period specified in Section 7.05(c)(i), then ExxonMobil's
exclusive right to acquire such Discovery Tools System from Symyx shall
continue for a term of *.
(d) The foregoing procedure shall not apply in the case of the
* that has been under development under the CRDLA, as to which Exhibit H will
apply.
(e) Additional exclusivity provisions may be discussed and
negotiated on a case-by-case basis with respect to a particular Discovery Tools
System.
7.06 Tools License. Subject to the terms and conditions of this
Agreement, Symyx DTools hereby grants to ExxonMobil the following licenses in
connection with any Discovery Tools System delivered hereunder, in each case for
the life of such Discovery Tools System:
7.06.1 a *, irrevocable, worldwide, non-transferable (except
as provided in this Article 7), license, without the right to
sublicense, under the Symyx Combinatorial Patent Rights, to use each
Discovery Tools System as delivered hereunder solely for ExxonMobil's
Internal Activities;
7.06.2 a *, irrevocable, worldwide, non-transferable (except
as provided in this Article 7), license, without the right to
sublicense, to install and use the software delivered with each
Discovery Tools System as delivered hereunder, on the computer
workstations delivered in connection therewith (and any replacements
thereof) solely in connection with ExxonMobil's operation of such
Discovery Tools System for ExxonMobil's Internal Activities, provided
that Symyx does not provide, and ExxonMobil and its Affiliates shall be
responsible to secure or use, their own Oracle database and operating
system and appropriate licenses thereto; and
7.06.3 a *, irrevocable, worldwide, non-transferable (except
as provided in this Article 7), license, without the right to
sublicense, to use the Symyx Combinatorial Know How in connection
solely with the operation of each Discovery Tools System as delivered
hereunder, solely for ExxonMobil's Internal Activities.
The licenses granted to ExxonMobil in this Section 7.06 shall be transferable to
any ExxonMobil Affiliate to which the Discovery Tools System has been
transferred, but only for use in the research, development, and
commercialization activities of such Affiliate (consistent with the provisions
of Section 20 of Exhibit A if such Affiliate is substituted for ExxonMobil in
such definition). The licenses granted to ExxonMobil in this Section 7.06 shall
be paid up upon payment by ExxonMobil of the Tools Price as set forth in Section
7.03 and Section 8.04.
7.07 Permitted Uses. Subject to the terms and conditions set forth
in this Agreement, during the Combinatorial License Term, ExxonMobil may modify
a Discovery Tools System
31
* Confidential treatment requested
(including modifying the software provided with a Discovery Tools System
pursuant to the licenses granted to ExxonMobil in Sections 5.03 and 5.04) as
delivered hereunder and such modification shall be within the licenses granted
in Section 7.06 for the life of such Discovery Tools System. Following the
Combinatorial License Term, if ExxonMobil further modifies a Discovery Tools
System and such modification *, such modification shall not be within the
licenses granted in Section 7.06. Further, ExxonMobil may incorporate its
proprietary data, including without limitation data from ExxonMobil screens and
compound information, into the database of any such system.
7.08 ExxonMobil DTool Improvements. ExxonMobil shall notify Symyx
of any ExxonMobil DTool Improvements during the Tool Delivery Period and hereby
grants Symyx a *. Notwithstanding the above, ExxonMobil DTool Improvements may
be used by ExxonMobil only for ExxonMobil's Internal Activities in accordance
with the licenses granted in Section 7.06.
7.09 Legend. All copies of the Discovery Tools System delivered
hereunder and any accompanying software and related documentation may include
Symyx' copyright, trademarks, patent numbers, and other proprietary notices in
the manner in which such notices were placed by Symyx DTools. Further, Symyx
DTools may label any such system with a permanent non-erasable identification
label including but not limited to Symyx' name, a model number, a sequential
serial number, date of manufacture, location manufactured, and specification
version to which the system was manufactured. ExxonMobil or its Affiliates to
which rights have been extended pursuant to Section 7.14 shall not knowingly
remove, obscure, or alter copyright notices, trademarks, patent numbers or other
proprietary rights notices affixed to or contained within any such system or
software.
7.10 Limited Discovery Tools System Warranty. Symyx DTools warrants
to ExxonMobil that each Discovery Tools System sold and licensed by Symyx DTools
to ExxonMobil or its Affiliates hereunder shall conform in all material respects
with the specifications for such System and will meet the acceptance criteria
for such System during the Warranty Period. The Warranty Period shall commence
on the delivery and acceptance of a Discovery Tools Systems by ExxonMobil or its
Affiliate and will end * after the delivery and acceptance of a Discovery Tools
Systems by ExxonMobil or its Affiliate or such later time as mutually agreed by
ExxonMobil and Symyx DTools. Symyx does not warrant that any Discovery Tools
System will meet ExxonMobil's requirements or that the operation of any
Discovery Tools System will be uninterrupted or error free or that any Discovery
Tools System will be compatible with other hardware or software that ExxonMobil
may elect to operate with any Discovery Tools System. If any Discovery Tools
System does not meet the warranty specified above during the Warranty Period,
Symyx DTools shall, at its option, repair or replace at no cost to ExxonMobil
any defective or nonconforming Discovery Tools System (or component thereof).
Symyx DTools will accomplish such repair or replacement as quickly as is
commercially practicable. The foregoing warranties and remedies will be void as
to any Discovery Tools System, components, or associated software damaged or
rendered unserviceable by: (a) the acts or omissions of personnel other than
Symyx employees and Symyx contractors; (b) misuse, abuse, neglect, theft,
vandalism, fire, water, or other peril; (c) modification of, alteration of, or
additions to any Discovery Tools System or associated software performed by
32
* Confidential treatment requested
non-Symyx personnel; or (d) non-conformities arising from use of any Discovery
Tools System with any other hardware, software, firmware, devices, or other
products, including ExxonMobil DTool Improvements.
7.11 Disclaimer. EXCEPT FOR THE LIMITED WARRANTY SET FORTH IN
SECTION 7.10, SYMYX MAKES AND EXXONMOBIL RECEIVES NO OTHER WARRANTIES OR
CONDITIONS, EXPRESS, IMPLIED, STATUTORY, OR OTHERWISE IN ANY PROVISION OF THIS
AGREEMENT OR OTHER COMMUNICATION WITH EXXONMOBIL WITH RESPECT TO ANY DISCOVERY
TOOLS SYSTEM DELIVERED UNDER THIS AGREEMENT, AND SYMYX SPECIFICALLY DISCLAIMS
ANY IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
7.12 Source Code. The parties shall enter into a source code escrow
agreement providing that, in the event Symyx is (a) liquidated, dissolved, or
ceases to carry on its business, during or after the Tool Delivery Period, or
(b) otherwise becomes unwilling or unable to support the software delivered in
connection with a Discovery Tools System delivered hereunder, by failure to
extend to ExxonMobil support or Software Upgrades on commercially reasonable
terms, where ExxonMobil can demonstrate that access to the source code is
reasonably necessary for ExxonMobil's continued use of such software, and
provided that ExxonMobil is not in default under this Article 7, a copy of the
software source code shall be provided to ExxonMobil solely for the purpose of
operating, maintaining and enhancing (either by or on behalf of ExxonMobil) a
Discovery Tools System delivered hereunder. At all times during the life of the
Discovery Tools Systems delivered hereunder, Symyx shall ensure that the latest
versions of the Software and the Developer's Kit Software released to ExxonMobil
have been provided to the escrow agent. Symyx shall notify ExxonMobil each time
an updated version of the Software or the Developer's Kit Software is provided
to the escrow agent. ExxonMobil shall pay the escrow expenses associated with
Symyx providing its source code to the escrow agent.
7.13 Restrictions.
7.13.1 Restrictions on ExxonMobil. Except as otherwise
permitted in this Agreement, ExxonMobil shall not: (a) reproduce,
distribute, copy, sell, lease, license or sublicense any Discovery
Tools System delivered hereunder or components thereof or accompanying
software (other than for back-up purposes), or any documentation
directly related thereto (other than as reasonably required in
connection with the use or operation of the Discovery Tools System);
(b) use the Discovery Tools System delivered hereunder, components
thereof or accompanying software other than as licensed in Section 7.06
above or as permitted in Section 7.07; (c) use the software delivered
with any Discovery Tools System delivered hereunder in connection with
any system or equipment other than the Discovery Tools System; (d)
attempt to, or permit a Third Party to, through any means, reverse
engineer, disassemble, decompile, or otherwise attempt to derive source
code from such software; or (e) use such software in any time-sharing
or other multi-user network or service bureau. ExxonMobil shall use
reasonable efforts to prevent any Affiliate or Third Party (provided
the Third Party has gained access to such Discovery Tools System
delivered hereunder or components thereof or accompanying software by
33
virtue of: i) having entered into a contract with ExxonMobil or its
Affiliates relating to the Discovery Tools System, or components
thereof or accompanying software, or ii) having gained access to the
Discovery Tools System or components thereof or accompanying software
through the intentional act or negligence of ExxonMobil or its
Affiliates) from engaging in any of the activities prohibited by this
Section. ExxonMobil shall assume responsibility in the event any
Affiliate or Third Party (provided the Third Party has gained access to
the Discovery Tools System or components thereof or accompanying
software by virtue of: A) having entered into a contract with
ExxonMobil or its Affiliates relating to the Discovery Tools System or
components thereof or accompanying software, or B) having gained access
to the Discovery Tools System or components thereof or accompanying
software through the intentional act or negligence of ExxonMobil or its
Affiliates) engages in any of the activities prohibited by this Section
to the same extent as if ExxonMobil had engaged in such activities
itself. Further, ExxonMobil shall ensure that access to the software
accompanying any Discovery Tools System hereunder shall be limited to
ExxonMobil's and its Affiliates' employees and in-house contract
personnel (and other Third Parties approved by Symyx in writing, with
such approval not to be unreasonably withheld) working directly with
such Discovery Tools System and solely on the computer workstations
provided therewith (or replacements thereof). ExxonMobil shall not
provide access to any Discovery Tools System to any Third Party, except
in connection with ExxonMobil's use of such Discovery Tools System
pursuant to the terms of this Agreement.
7.13.2 Restrictions on Symyx. *
7.14 Right to Extend Licenses to Affiliates. ExxonMobil shall have
the right to extend the licenses and rights set forth in this Article 7 to any
of its Affiliates (but without the right to grant any further extensions) for
use in the research, development, and commercialization activities of such
Affiliates (consistent with the provisions of Section 20 of Exhibit A if such
Affiliate is substituted for ExxonMobil in such definition), provided that
ExxonMobil shall not then be in default with respect to any of its obligations
to Symyx under this Article 7. Any such extension shall be in writing and shall
be accepted in writing by such Affiliate. A copy of such writing shall be
provided to Symyx upon request. All of the restrictions of Section 7.13 shall
apply to such Affiliate to the same extent as they apply to ExxonMobil and the
operations of such Affiliate shall be deemed to be the operations of ExxonMobil.
ExxonMobil shall account therefor and be primarily responsible for the
performance by such Affiliate of all of its obligations hereunder. A license
extended under this Section shall terminate for a given entity at the time such
entity ceases to be an Affiliate if not expiring or terminated sooner under the
terms of this Agreement.
7.15 Indemnification Against Claims of Infringement. (a) In the
event any legal proceedings are brought * against ExxonMobil or its Affiliates
claiming that any Discovery Tools System delivered to ExxonMobil or an
ExxonMobil Affiliate pursuant to this Article 7 infringes a Third Party's trade
secret directed to * or a claim of a Third Party's patent directed to *, Symyx
shall defend the same at its expense and pay any costs, damages, and attorney
fees finally awarded or negotiated as a result of settlement or judgment against
ExxonMobil or such
34
* Confidential treatment requested
ExxonMobil Affiliate, provided that ExxonMobil or such Affiliate gives Symyx
prompt written notice within * of such claim against it and cooperates fully
with Symyx in providing all authority, information, and reasonable assistance to
enable Symyx at its option to settle or defend such claim. ExxonMobil shall have
the right, at its expense, to participate in such defense. Symyx shall have no
right to settle or compromise the litigation in a manner that would * without
the consent of ExxonMobil and ExxonMobil or its Affiliates shall have no right
to settle or compromise the litigation in a manner that would *. Symyx shall
have no liability for any claim hereunder based on the incorporation into any
Discovery Tools System of any ExxonMobil DTool Improvement or any other hardware
or software if such claim would have been avoided had such ExxonMobil DTool
Improvement or other hardware or software not been incorporated into or used
with such Discovery Tools System.
(b) In the event any such legal proceeding is brought, Symyx
may, at its option, replace or modify the Discovery Tools System or parts
thereof to render it non-infringing, or procure for ExxonMobil or such Affiliate
the right to continue using such Discovery Tools System, provided that such
replacement or modification does not *.
(c) In the event any such legal proceeding results in
ExxonMobil or any of its Affiliates being required to pay royalties or damages
to such Third Party with respect to any Product from a Royalty-Bearing Project,
then ExxonMobil shall have the right to immediately re-open the royalty
determination with respect to such Product from a Royalty-Bearing Project in
accordance with Exhibit L or Exhibit O, as applicable, with such re-opener
limited to considering the effect of the royalties or damages required to be
paid as a result of such legal proceeding.
(d) THE FOREGOING PROVISIONS OF THIS SECTION STATE THE ENTIRE
LIABILITY AND OBLIGATIONS OF SYMYX WITH RESPECT TO ANY ALLEGED OR ACTUAL
INFRINGEMENT OF THIRD PARTY INTELLECTUAL PROPERTY RIGHTS BY ANY DISCOVERY TOOLS
SYSTEM DELIVERED HEREUNDER OR ANY PART THEREOF. SYMYX' LIABILITY UNDER ANY CAUSE
OF ACTION ARISING UNDER THIS SECTION IS * WITH RESPECT TO THE PARTICULAR
DISCOVERY TOOLS SYSTEM or Systems SUBJECT TO SUCH CAUSE OF ACTION.
7.16 Cooperation. Symyx shall provide reasonable assistance to
ExxonMobil in the event ExxonMobil wants to conduct a freedom to operate study
or studies with respect to a Discovery Tools System or a potential Discovery
Tools System developed (in whole or in part) under this Agreement or
contemplated to be delivered to ExxonMobil or an ExxonMobil Majority Owned
Affiliate pursuant to this Article 7.
35
* Confidential treatment requested
ARTICLE 8
PAYMENTS
8.01 Research and Development Funding.
8.01.1 Staffing. The Research Program will be staffed by
Symyx Tech according to the following schedule:
Average # of FTEs (exclusive of
Time Period Informatics FTEs per Section 8.02)
----------- ----------------------------------
*
8.01.2 Research Program Funding. ExxonMobil shall pay Symyx
Tech for actual FTE time spent on Research Program activities by the
FTEs described in Section 8.01.1 at a rate per FTE of * per year during
the Research Program Term (subject to adjustment for any extension of
the Research Program Term pursuant to Section 14.01.2). Such FTE rate
shall be deemed to include compensation for reasonable travel and
living expenses incurred in connection with Research Program
activities.
8.01.3 Payment. Subject to Sections 8.10 and 8.11, payment of
the amounts due under Section 8.01.2 shall be made by ExxonMobil as
follows: (a) an initial payment was made on * under the Interim
Alliance Agreement, which payment was equal to the funding for * as
described in Sections 8.01.1 and 8.01.2, less amounts paid pursuant to
the CRDLA for research and development in the second quarter of 2003;
and (b) beginning on *, and every three months thereafter during the
Research Program Term, payment shall be made in advance according to
the staffing for the quarter as set forth in Section 8.01.1, at the
funding rate set forth in Section 8.01.2, provided that funding for the
third calendar quarter of 2003 shall be made as described in Sections
8.01.1 and 8.01.2, less amounts, if any, paid pursuant to the CRDLA for
research and development in the third quarter of 2003. In the event
actual staffing for a particular quarter does not equal the staffing as
paid in advance, appropriate adjustments shall be made as part of the
subsequent quarter's invoice.
8.02 Software Support, Integration and Implementation. The Software
License Fees specified in Section 8.03 below shall be deemed to include full
compensation for * to be provided by Symyx DTools during the Software License
Term pursuant to Section 5.01. Subject to Sections 8.10 and 8.11, ExxonMobil
shall pay Symyx DTools for actual time of the other * Informatics FTEs at a rate
per Informatics FTE of * per year, beginning as of *, and extending through the
Software License Term (subject to adjustment for any extension of the Software
License Term pursuant to Section 14.01.2). Such payments shall be made quarterly
in advance. In the event actual staffing (beyond the * Informatics FTEs covered
by the Software License Fees) for a particular quarter does not equal the * FTEs
as paid in advance, appropriate adjustments shall be made as part of the
subsequent quarter's invoice.
8.03 Software License Fees. In consideration for the Software
licenses as set forth in Article 5, ExxonMobil shall pay to Symyx DTools an
annual software license fee in the amount
36
* Confidential treatment requested
of * during the Software License Term (subject to any extension of the Software
License Term pursuant to Section 14.01.2). Subject to Sections 8.10 and 8.11,
such annual payments shall be due and payable in equal quarterly installments
beginning on *, and each three (3) months thereafter during the Software License
Term. Each such quarterly installment shall be nonrefundable and noncreditable,
subject to Section 14.05.
8.04 Discovery Tools. ExxonMobil will make payments to Symyx DTools
for Discovery Tools Systems purchased by ExxonMobil as set forth in Article 7.
8.05 Technology License and Transfer Payments. In consideration for
the rights provided to ExxonMobil hereunder, ExxonMobil shall pay to Symyx Tech
an annual technology license and transfer payment in the amount of * each year
during the Research Program Term. Subject to Sections 8.10 and 8.11, such annual
payments shall be due and payable in equal quarterly installments. The first
such quarterly payment was made on * pursuant to Amendment No. 2 to the CRDLA,
which payment shall fully satisfy ExxonMobil's obligations under this Section
8.05 for the period from the Effective Date through *. Subsequent quarterly
payments shall be payable on *, and on the first day of each calendar quarter
during the remainder of the Research Program Term, and the last such quarterly
payment (subject to any extension of the Research Program Term pursuant to
Section 14.01.2) due and payable on *. Each such quarterly installment shall be
nonrefundable and noncreditable.
8.06 Advance Royalty Payments. In consideration for the rights
provided to ExxonMobil hereunder, ExxonMobil shall pay to Symyx Tech an annual
advance royalty payment in the amount of * each year during the Research Program
Term. Subject to Sections 8.10 and 8.11, such annual payments shall be due and
payable in equal quarterly installments. The first such quarterly payment was
made on * pursuant to Amendment No. 2 to the CRDLA, which payment shall fully
satisfy ExxonMobil's obligations under this Section 8.06 for the period from the
Effective Date through *. Subsequent quarterly payments shall be payable on *,
and on the first day of each calendar quarter during the remainder of the
Research Program Term, and the last such quarterly payment (subject to any
extension of the Research Program Term pursuant to Section 14.01.2) due and
payable on *. Each such quarterly installment shall be nonrefundable and
noncreditable other than as set forth in Section 8.07.8.
8.07 License Royalties.
8.07.1 Royalty-Bearing Projects. In consideration of the
assignment of the intellectual property rights set forth in Section
4.01 and the license rights set forth in Section 4.03, ExxonMobil shall
pay license royalties to Symyx Tech with respect to the following
Royalty-Bearing Projects:
*
License royalties shall be paid to Symyx Tech by ExxonMobil for Net
Sales or Use by ExxonMobil or its Affiliates of Products resulting from
research activities performed within the Royalty-Bearing Projects;
provided, however, that license royalties shall be payable with respect
to a particular Product only for Net Sale or Use of such Product
37
* Confidential treatment requested
within the royalty-bearing project scope of the Royalty-Bearing Project
from which such Product originated, as approved in writing by the
Advisory Committee. Such license royalties shall be paid at royalty
payment rates determined in accordance with Exhibit L (for all
Royalty-Bearing Projects except the * Royalty Projects) or Exhibit O
(for * Royalty Projects). For all Royalty-Bearing Projects, ExxonMobil
shall also pay Symyx Tech a portion of any royalty payments received by
ExxonMobil or its Affiliates from Licensees, as determined in
accordance with Exhibits L or O, whichever is applicable. In the event
that the license royalty rate for Net Sales or Use of a Product makes
it economically impracticable to commence or continue commercial sale
or use of the Product, ExxonMobil and Symyx Tech will discuss possible
alternative mechanisms to distribute the value created under this
Agreement without obligation to reach agreement. Nothing in this
Agreement shall be interpreted or construed as obligating ExxonMobil or
its Affiliates to commence or continue commercial sale or use of any
Product.
ExxonMobil has internal procedures and mechanisms to obtain payments
for use of Program Technology by its * Affiliates and will apply such
procedures and mechanisms in implementing this Agreement. ExxonMobil
has secured from such Affiliates an obligation to pay costs incurred by
ExxonMobil for licenses or other rights purchased by ExxonMobil from
outside companies.
Except as expressly provided in this Section 8.07.1, ExxonMobil shall
have no royalty payment obligations under this Agreement for any use of
Program Technology in * by itself or its Affiliates or its permitted
Licensees.
8.07.2 Selection of Royalty-Bearing Projects. Symyx shall be
solely responsible for selection of the Royalty-Bearing Projects
pursuant to Section 8.07.1. To assist Symyx in making such selection,
ExxonMobil or its Designee will provide to Symyx the reports and
information specified in Section 10.02, provided that neither
ExxonMobil nor its Designee shall be liable to Symyx for any omissions,
inaccuracies, or other errors in such reports absent fraud or
intentional or willful misrepresentation.
8.07.3 Extension of Time to Select Certain Royalty-Bearing
Projects. Symyx may elect to extend the time within which to choose *
of the Royalty-Bearing Projects pursuant to Section 8.07.1(d) for an
additional * by written notice to ExxonMobil, provided that if Symyx
elects such extension, such election shall constitute an irrevocable
waiver of Symyx' right to select as a Royalty-Bearing Project *,
provided that such irrevocable waiver shall only be applicable with
respect to a Royalty-Bearing Project as to which Symyx has elected to
extend the time to choose as described above.
8.07.4 Screening Materials for Other Uses. During the Research
Program Term, Symyx shall have the right, at its sole expense and
without use of the FTEs assigned to the ExxonMobil Research Projects,
to screen and characterize Materials (other than ExxonMobil Proprietary
Materials) identified in a particular Research Project for other new
uses within *, provided that all results of such activities shall be
considered to be Program Technology. If Symyx identifies a new use for
such a Material within *, and
38
* Confidential treatment requested
such new use is not within the scope of any existing Research Project,
then Symyx shall advise ExxonMobil of such new use, and Symyx may
propose establishing a new Research Project based on such new use. The
royalty-bearing project scope for such new Research Project shall be
submitted to and approved by the Advisory Committee, consistent with
the royalty-bearing project scope for the Research Project in which the
Material was identified (the "Substitute Royalty-Bearing Project
Scope"), even if the proposed new Research Project is not activated.
ExxonMobil shall have no obligation to agree to establish such proposed
new Research Project. If ExxonMobil declines to establish such proposed
new Research Project, then*.
8.07.5 Identification of Uncapped Royalty Project. At such
time as the cumulative license royalties paid by ExxonMobil and its
Affiliates to Symyx Tech for all Royalty-Bearing Projects pursuant to
this Section 8.07 reaches *, Symyx Tech shall select * as the "Uncapped
Royalty Project." License royalties for the Uncapped Royalty Project
shall be payable for the full royalty payment term specified in Section
8.07.7 below.
8.07.6 Cumulative Cap on License Fee Payments. With the sole
exception of the Uncapped Royalty Project, the total cumulative
royalties to be paid by ExxonMobil and its Affiliates to Symyx Tech for
all Royalty-Bearing Projects pursuant to this Section 8.07, including
royalties paid with respect to the Uncapped Royalty Project, shall be
subject to a maximum of *. Accordingly, when the total cumulative
amount of royalties paid to Symyx Tech by ExxonMobil for all
Royalty-Bearing Projects pursuant to Section 8.07, including the
Uncapped Royalty Project, reaches *, royalty payments for all
Royalty-Bearing Projects, except the Uncapped Royalty Project, will
terminate and be deemed fully-paid.
8.07.7 Royalty Payment Term. Subject to the cumulative royalty
cap specified in Section 8.07.6, ExxonMobil's obligation to pay license
royalties to Symyx Tech shall continue for each Royalty-Bearing Product
until *.
8.07.8 Royalty Offset.
(a) Pursuant to Amendment No. 2 to the CRDLA, EMCC
received an advance royalty offset of * against royalty payments due to
Symyx with respect to the * Project and the * Project. Following
execution of this Agreement, such advance royalty offset shall be
applicable to license royalties payable to Symyx Tech under this
Section 8.07, but only with respect to the * Project and the * Project.
(b) Except to the extent provided in Exhibit O, all
advance royalty payments paid to Symyx Tech by ExxonMobil pursuant to
Section 8.06 shall be fully creditable, dollar-for-dollar, against
license royalties, if any, payable to Symyx Tech under this Section
8.07 with respect to *.
(c) Notwithstanding Sections 8.07.8(a) and (b) above,
for any given calendar quarter, no more than * of the license royalty
obligation otherwise due to Symyx
39
* Confidential treatment requested
Tech may be offset by the advance royalty offsets and advance royalty
payments set forth in Sections 8.07.8(a) and (b) above.
8.07.9 Alternate Royalty-Bearing Projects. At the time Symyx
selects the * Royalty Project, Symyx may also select an "Alternate *
Royalty Project," and at the time Symyx selects the * Royalty Project,
Symyx may also select an "Alternate * Royalty Project." If ExxonMobil
or an Affiliate to which rights hereunder have been extended has not
commercialized any Products originating from the * Royalty Project at
any time within * years after Symyx' selection thereof, then Symyx
shall have the right, but not the obligation, to substitute the
Alternate * Royalty Project for the * Royalty Project. Similarly, if
ExxonMobil or an Affiliate to which rights hereunder have been extended
has not commercialized any Products originating from the * Royalty
Project at any time within * years after Symyx' selection thereof, then
Symyx shall have the right, but not the obligation, to substitute the
Alternate * Royalty Project for the * Royalty Project. In the event of
any such substitution, no license royalties shall be due for activities
occurring prior to the date of the substitution.
8.08 *. If ExxonMobil exercises one of the options set forth in
Section H8(b) of Exhibit H, it shall make the payments to Symyx as set forth
therein.
8.09 Third Party Royalties. Symyx shall not be responsible for
payments due to Third Parties for the manufacture, sale, or use of Products by
ExxonMobil or its Affiliates or Licensees, provided that such payments shall be
taken into account in determining * pursuant to Exhibit L. The foregoing
sentence shall not negate Symyx' obligations under Sections 5.07, 7.15, and
13.02.
8.10 Invoicing. Symyx shall submit invoices to ExxonMobil for the
amounts due under this Agreement, provided that amounts payable pursuant to
Section 8.04 with respect to a particular Discovery Tools System shall be
invoiced as provided in the definitive agreement entered into pursuant to
Section 7.02 for such Discovery Tools System (or to the address set forth below
if such definitive agreement does not provide another address). Each such
invoice shall indicate the number of FTEs assigned to each active Project for
the period covered by the invoice, as well as any adjustments in the actual
staffing for each active Project. ExxonMobil shall pay all undisputed amounts
within * following receipt of an acceptable invoice therefor, or on the due date
for such payment if such due date is later than * days following receipt of the
invoice. Invoices shall be sent to the following address, or to such other
addresses as ExxonMobil may designate from time to time:
40
* Confidential treatment requested
ExxonMobil Research and Engineering Company
▇.▇. ▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: Vice President R&D
8.11 Financial Responsibility. If Symyx Tech's "Quick Ratio" is
less than *, ExxonMobil may, upon written notice to Symyx, replace the advance
quarterly payments provided in Sections 8.01.3, 8.02, 8.03, 8.05, and 8.06 with
monthly payments made in advance for each month. Such action by ExxonMobil shall
not constitute a breach of ExxonMobil's payment obligations to Symyx under the
terms and conditions of this Agreement. "Quick Ratio" as used in this Section
8.11 shall mean [cash + cash equivalents + marketable or available-for-sale
securities (including all non-current securities, if any) + accounts receivable]
divided by current liabilities.
ARTICLE 9
ACCOUNTING AND AUDIT
9.01 License Payment Reports and Payments. After the first
commercial sale, or commercial use, of a Product or grant of a license on which
license payments are payable by ExxonMobil or its Affiliates hereunder,
ExxonMobil shall make or have made quarterly written reports to Symyx Tech
within * days after the end of each calendar year quarter, stating in each such
report, separately for ExxonMobil and each Affiliate and each Licensee, the
description and volume of each activity during the calendar year quarter upon
which a license payment is payable under Section 8.07. Concurrently with the
making of such reports, ExxonMobil shall pay to Symyx Tech all license payments
due for such calendar year quarter calculated at the rate determined in
accordance with Exhibit L or Exhibit O, whichever is applicable.
9.02 Payment Method.
(a) All payments due under this Agreement to Symyx Tech shall
be made in U.S. dollars by bank wire transfer in immediately available funds
according to the following wire transfer instructions, unless otherwise
instructed by Symyx Tech in writing:
*
(b) All payments due under this Agreement to Symyx DTools
shall be made in U.S. dollars by bank wire transfer in immediately available
funds according to the following wire transfer instructions, unless otherwise
instructed by Symyx DTools in writing:
*
41
* Confidential treatment requested
(c) Any payments that are not paid on the date such payments
are due under this Agreement shall bear interest as follows: (i) no interest
shall be charged for the * following the due date; (ii) interest shall be
charged at * for the next *; and (iii) thereafter, interest shall be charged at
*; provided that in no event shall the rate of interest exceed the maximum rate
permitted by law in the event such rate is lower than the rate in (ii) or (iii).
(d) Nothing in this Section 9.02 shall prejudice any other
rights or remedies available to either ExxonMobil or Symyx under this Agreement,
at law, or in equity.
9.03 Currency Conversions. If any currency conversion shall be
required in connection with the calculation of license payments hereunder, such
conversion shall be made using the selling exchange rate for conversion of the
foreign currency into U.S. dollars, quoted for current transactions reported in
The Wall Street Journal for the last business day of the calendar quarter to
which such payment pertains.
9.04 Records; Inspection. ExxonMobil and Symyx shall keep complete,
true and accurate books of account and records for the purpose of determining
the performance of such party's obligations under this Agreement. Such books and
records shall be kept for at least * following the end of the calendar year
quarter to which they pertain. Such records will be open for inspection during
such * period by the internal audit staff of the inspecting party or by a public
accounting firm to whom the inspected party has no reasonable objection, solely
for the purpose of confirming performance of such party's obligations under this
Agreement. Such inspections may be made no more than once each calendar year, at
reasonable times and on reasonable notice. Inspections conducted under this
Section 9.04 shall be at the expense of the inspecting party, unless a variation
exceeding * in favor of the inspecting party is established in the course of any
such inspection, whereupon all reasonable costs relating to the inspection for
such period and any unpaid amounts that are discovered will be paid promptly by
the inspected party together with interest thereon from the date such payments
were due at the lesser of (a) *; or (b) the maximum rate permitted by law. The
internal audit staff of the inspecting party or the public accounting firm
employees shall sign a reasonable confidentiality agreement as a condition
precedent to the inspection, and shall report to the inspecting party only that
information necessary to confirm performance of the inspected party's
obligations under this Agreement. ExxonMobil and Symyx shall treat all
information learned in the course of any audit or inspection under this Section
9.04 as Confidential Information, except to the extent necessary for such party
to enforce its rights under this Agreement or as required by law.
9.05 Tax Matters. All license royalty payments and other payments
required to be paid to Symyx pursuant to this Agreement shall be paid with
deduction for withholding for or on account of any taxes (other than taxes
imposed on or measured by net income) or similar governmental charge imposed by
a jurisdiction other than the United States ("Withholding Taxes") to the extent
*. ExxonMobil shall provide Symyx a certificate evidencing payment of any
Withholding Taxes hereunder. The parties will exercise diligent efforts to
ensure that any Withholding Taxes imposed are reduced as far as possible under
provisions of any applicable treaties.
42
* Confidential treatment requested
ARTICLE 10
COMMERCIALIZATION
10.01 Commercialization. * If ExxonMobil or its Affiliates extract
value from a Product from a Royalty-Bearing Project, other than through the
commercialization of royalty-bearing Products (e.g. a cross license not
involving the sale of Products), and ExxonMobil's or its Affiliates' business
records document such value generation, or such value can be demonstrated by
other competent evidence, Symyx Tech shall have the right to be compensated for
such value generation in the manner set forth in Section 8.07.
10.02 Reports. Following completion of each Research Project,
ExxonMobil or its Designee shall provide Symyx Tech with a written report
containing an up-to-date summary of the status of development and
commercialization activities with respect to such Research Project. As each
Project or Product progresses through ExxonMobil's or its Affiliates' stage-gate
process, ExxonMobil or its Designee shall provide those portions of the gate
package information relevant to Symyx' selection of Royalty-Bearing Projects
(development and commercialization status and plans, including the economics and
forecasts related thereto) for such Project or Product. In addition, * prior to
any point at which Symyx must select a Royalty-Bearing Project, or decide
whether to extend the time to select a Royalty-Bearing Project as provided in
this Agreement, Symyx may request updated information relevant to development
and commercialization (including the economics and forecasts related thereto),
and ExxonMobil or its Designee will provide such updated information, if any, to
Symyx within *. After Symyx' selection of the Royalty-Bearing Projects, such
reports will be provided only with respect to *. All reports and information
provided under this Section 10.02 shall be deemed Confidential Information of
ExxonMobil and its Affiliates.
ARTICLE 11
CONFIDENTIALITY
11.01 Confidentiality. (a) Symyx and ExxonMobil acknowledge that it
may be necessary to exchange Confidential Information as part of the research
and development activities carried out under this Agreement. Symyx and
ExxonMobil shall each limit disclosure of Confidential Information to that
reasonably necessary for performance of this Agreement and shall each solely
determine the scope and content of the Confidential Information to be disclosed
to the other under this Agreement. Symyx and ExxonMobil shall not intentionally
disclose business information unrelated to the research and development
activities carried out under this Agreement, except as otherwise required by
Section 10.02. Subject to Section 11.02, the following shall apply with respect
to all such Confidential Information:
(i) For a period of * years from the end of the
Research Program Term, Confidential Information disclosed by one party
("Discloser") to the other party ("Recipient") shall be used by such
Recipient solely in furtherance of performing the Recipient's
obligations under this Agreement; and
43
* Confidential treatment requested
(ii) For a period of * from the end of the Research
Program Term, the Recipient shall maintain the Discloser's Confidential
Information in confidence,
provided that the Recipient may disclose the Discloser's Confidential
Information, and extend the right to use the Discloser's Confidential
Information, to any of the Recipient's Affiliates that are obligated to comply
with the confidential obligations and usage restrictions imposed on the
Recipient in this Agreement with respect to the Discloser's Confidential
Information.
(b) Symyx and ExxonMobil shall limit access to Confidential
Information of the other or the other's Affiliates to those of its employees,
contractors, Affiliates, and Licensees having reasonable need to know such
information in connection with this Agreement and who have agreed in writing to
confidentiality obligations and use restrictions at least as restrictive as
those undertaken by Recipient under this Agreement. Recipient shall not provide
access to the Confidential Information to any other persons without the prior
written consent of the Discloser. Any person to whom such Confidential
Information is disclosed by Recipient shall be subject to the same disclosure
and non-use obligations as Recipient. Recipient shall specifically notify any
person to whom such Confidential Information is disclosed by the Recipient of
the confidentiality obligations and use restrictions regarding such Confidential
Information. Recipient shall assume responsibility and accept liability for the
non-fulfilment of these obligations by any person given access to the
Confidential Information.
(c) Symyx shall not, without the prior written consent of
ExxonMobil, perform, have performed, or allow to be performed any chemical or
other physical analysis on any ExxonMobil Proprietary Materials to determine the
chemical composition or identity of such material. Symyx shall safeguard for
ExxonMobil any ExxonMobil Proprietary Material provided by ExxonMobil or its
Affiliates for use in the Research Program or otherwise under this Agreement,
and shall use reasonable efforts, but not less than efforts it uses with respect
to its own materials, to prevent its employees, except those employees involved
in the Research Program, and others from acquiring samples of such material.
(d) The obligations under this Agreement with respect to
Confidential Information shall not apply to information or material that:
(i) is made known or available to the Recipient by a
Third Party as a matter of right and without obligation of
confidentiality or restriction on use;
(ii) was already known to the Recipient, as evidenced
by its written records or other competent evidence, before disclosure
thereof by the Discloser to the Recipient;
(iii) was within, or later falls within, the public
domain without breach of this Agreement;
(iv) was publicly disclosed with the prior written
approval of the Discloser;
44
* Confidential treatment requested
(v) was disclosed pursuant to a requirement or demand
of a lawful governmental or judicial authority, but only to the extent
required by operation of law, regulation or court order with prior
written notice to the Discloser and with the Recipient using reasonable
efforts to obtain appropriate protective orders to maintain the
confidentiality of such information or material; or
(vi) was independently developed for the Recipient by
employees or contractors of the Recipient without recourse to the
Confidential Information of the Discloser.
For the purpose of this Section 11.01(d), disclosures made under this Agreement
shall not be deemed to be within the foregoing exceptions merely because they
are embraced by more general disclosures in the public domain or in the prior
possession of the Recipient. In addition, any combination of features shall not
be deemed to be within the foregoing exceptions merely because the individual
features are in the public domain or in the prior possession of the Recipient,
unless the combination itself and its principles of operation are in the public
domain or in the prior possession of the Recipient.
(e) EMCC has developed a proprietary technique for *.
ExxonMobil or EMCC may disclose such proprietary technique to Symyx to
facilitate discussions regarding potential use of the technique in the Research
Program. In such event, the technique will be deemed to be Confidential
Information, and subject to the provisions of Section 11.01(d), Symyx shall not
disclose the technique to any third party and shall not use the technique for
any purpose (including use in connection with the Research Program) without
prior written authorization from ExxonMobil or EMCC.
11.02 Permitted Use and Disclosures. Notwithstanding the provisions
of Section 11.01, Symyx and ExxonMobil may:
(a) use Confidential Information disclosed to it by the other
in conducting the Research Program;
(b) use Confidential Information as otherwise expressly
permitted in this Agreement; and
(c) use or disclose Confidential Information disclosed to it
by the other to the extent such use and disclosure is reasonably necessary in
(i) prosecuting or defending litigation, or
(ii) complying with applicable laws, governmental
regulations or court orders or submitting mandatory information to tax
or other governmental authorities,
provided that if a party is required to make any such disclosure, other than
pursuant to a confidentiality agreement, it will give reasonable advance notice
to the other party of such disclosure and will use its reasonable efforts to
secure confidential treatment of such information
45
* Confidential treatment requested
in consultation with the other party prior to its disclosure (whether through
protective orders or otherwise).
11.03 Nondisclosure.
(a) Except as provided in this Agreement, Symyx and ExxonMobil
shall not disclose the terms of this Agreement to any Third Party without the
prior written consent of the other, except to such party's attorneys, advisors,
investors, and others on a need to know basis under circumstances that ensure
the confidentiality thereof. Pursuant to Section 11.01(b), Symyx and ExxonMobil
shall require each party to which the terms of this Agreement are disclosed to
agree to comply with this Section 11.03(a).
(b) Except as expressly permitted in the Agreement, Symyx and
ExxonMobil shall not disclose any Program Technology or any Combinatorial
Chemistry Technology to any Third Party without the prior written consent of the
other, except that either ExxonMobil or Symyx may disclose Program Technology to
a Third Party in connection with the exercise of rights granted to ExxonMobil or
Symyx pursuant to Article 4 under circumstances that ensure the confidentiality
thereof. Pursuant to Section 11.01(b), Symyx and ExxonMobil shall require each
party to which Program Technology or Combinatorial Chemistry Technology are
disclosed to agree to comply with this Section 11.03(b).
(c) Neither Symyx nor ExxonMobil is authorized to publish any
Program Technology without the permission of the other, which permission shall
not be unreasonably withheld, except as necessary in the filing and prosecution
of Program Patents as provided in Article 4. Symyx shall not disclose to any
Third Party any application or use of Program Technology by ExxonMobil and its
Affiliates in the ExxonMobil Exclusive Fields and ExxonMobil Business Areas.
ExxonMobil may disclose any Program Technology to its Affiliates under suitable
confidentiality provisions in accordance with this Article 11. Symyx and
ExxonMobil may disclose (i) the non-financial terms of this Agreement or (ii)
any Program Technology to their respective Licensees on a need to know basis
under suitable confidentiality provisions in accordance with this Article 11,
but only to the extent necessary to exercise rights granted under this
Agreement, provided that Symyx Combinatorial Know-How may not be disclosed to
Licensees.
(d) Notwithstanding the above, Generally Acquired Skills shall
not be subject to the nondisclosure obligation, and ExxonMobil and Symyx shall
each be free to use and disclose all Generally Acquired Skills.
(e) In the event it is necessary to disclose the terms of this
Agreement in connection with any securities law filing, the disclosing party
shall inform the other party prior to any such disclosure, and permit the other
party a reasonable opportunity to review and comment with respect to the
disclosure and amendments thereto prior to their filing.
11.04 Third Party Information. Symyx shall not disclose to
ExxonMobil or its Affiliates any information that is proprietary or confidential
to any Third Party. Symyx shall take appropriate steps and establish appropriate
procedures to avoid inadvertent disclosure to
46
ExxonMobil or its Affiliates of any such Third Party information. Further, Symyx
shall indemnify ExxonMobil and its Affiliates with respect to all costs,
expenses, damages, or other monetary losses incurred by ExxonMobil or its
Affiliates as a result of Symyx' disclosure to ExxonMobil or its Affiliates of
any such Third Party information, provided that Symyx' maximum liability with
respect to specific Third Party information shall be limited to *. If any
disclosure to ExxonMobil or its Affiliates by Symyx of Third Party information
results in ExxonMobil or any of its Affiliates being required to pay royalties
or damages to such Third Party with respect to any royalty-bearing Product, then
ExxonMobil shall have the right to immediately re-open the royalty determination
with respect to such royalty-bearing Product.
ARTICLE 12
REPRESENTATIONS AND WARRANTIES
12.01 ExxonMobil's Representations. ExxonMobil represents and
warrants to Symyx that: (a) ExxonMobil has the right to enter this Agreement and
grant the rights stated in this Agreement; (b) ExxonMobil is a corporation duly
organized, validly existing and in good standing under the laws of the State of
Delaware; (c) ExxonMobil has the power and authority to execute and deliver this
Agreement and to perform its obligations hereunder; and (d) ExxonMobil has by
all necessary corporate action duly and validly authorized the execution and
delivery of this Agreement and the performance of its obligations hereunder and
such Agreement constitutes a valid and binding obligation of ExxonMobil
enforceable in accordance with its terms.
12.02 Symyx Tech's Representations. Symyx Tech represents and
warrants to ExxonMobil that: (a) Symyx Tech has the right to enter this
Agreement and grant the rights stated in this Agreement; (b) Symyx Tech is a
corporation duly organized, validly existing, and in good standing under the
laws of the State of Delaware; (c) Symyx Tech has the power and authority to
execute and deliver this Agreement and to perform its obligations hereunder; (d)
Symyx Tech has by all necessary corporate action duly and validly authorized the
execution and delivery of this Agreement and the performance of its obligations
hereunder and such Agreement constitutes a valid and binding obligation of Symyx
Tech enforceable in accordance with its terms; (e) to Symyx Tech's knowledge, as
of the Effective Date, carrying out its responsibilities as set forth in the
Research Plans and the * Research and Development Plan will not infringe the *;
(f) Symyx Tech has performed or has had performed freedom to operate searches
and studies on*; (g) Symyx Tech uses reasonable efforts to monitor published
patents and patent applications in the field of Combinatorial Chemistry; (h)
Symyx Tech shall not knowingly infringe * in the area of Combinatorial Chemistry
in conducting its activities under this Agreement and shall notify ExxonMobil if
it becomes aware of * in the field of Combinatorial Chemistry applicable to the
activities under this Agreement; and (i) *.
12.03 Symyx DTools' Representations. Symyx DTools represents and
warrants to ExxonMobil that: (a) Symyx DTools has the right to enter this
Agreement and grant the rights stated in this Agreement; (b) Symyx DTools is a
corporation duly organized, validly existing and in good standing under the laws
of the State of California; (c) Symyx DTools has the power and
47
* Confidential treatment requested
authority to execute and deliver this Agreement and to perform its obligations
hereunder; and (d) Symyx DTools has by all necessary corporate action duly and
validly authorized the execution and delivery of this Agreement and the
performance of its obligations hereunder and such Agreement constitutes a valid
and binding obligation of Symyx DTools enforceable in accordance with its terms.
ARTICLE 13
INDEMNIFICATION
13.01 ExxonMobil. Subject to the provisions and limitations
contained in this Agreement, ExxonMobil shall indemnify, defend, and hold
harmless Symyx and its Affiliates and their respective directors, officers,
employees, agents and their respective successors, heirs and assigns ("Symyx
Indemnitees") from and against any losses, costs, claims, damages, liabilities
or expense (including reasonable attorneys' and professional fees and other
expenses of litigation) (collectively, "Liabilities") to the extent arising,
directly or indirectly out of or in connection with Third Party claims, suits,
actions, demands or judgments, relating to:
(a) any Agreement Materials or Products that are developed,
manufactured, used, sold or otherwise distributed by or on behalf of ExxonMobil,
its Affiliates, Licensees, or other designees (other than Symyx, its Affiliates
and licensees);
(b) ExxonMobil's activities under this Agreement, except those
activities specified in Articles 5, 6, and 7 of this Agreement; and
(c) any breach by ExxonMobil of the representations and
warranties made in this Agreement.
13.02 Symyx. Subject to the provisions and limitations contained in
this Agreement, Symyx shall indemnify, defend, and hold harmless ExxonMobil, its
Affiliates and Licensees, and their respective directors, officers, employees,
agents and their respective successors, heirs, and assigns ("ExxonMobil
Indemnitees") from and against any losses, costs, claims, damages, liabilities,
or expense (including reasonable attorneys' and professional fees and other
expenses of litigation) (collectively, "Liabilities") to the extent arising,
directly or indirectly out of or in connection with Third Party claims, suits,
actions, demands or judgments, relating to:
(a) any product (lower case intentional) or process developed,
manufactured, used, sold or otherwise distributed by or on behalf of Symyx, its
Affiliates, licensees, or other designees (other than ExxonMobil, its Affiliates
and Licensees);
(b) Symyx licensing and sublicensing activities;
(c) Symyx' activities under this Agreement, except those
activities specified in Articles 5, 6, and 7 of this Agreement; and
48
(d) any breach by Symyx of its representations and warranties
made in this Agreement.
13.03 Joint Negligence. Where any Liability is the result of the
joint negligence or misconduct of ExxonMobil and Symyx, Symyx' duty of
indemnification under Section 13.02 shall be diminished by, and ExxonMobil's
duty of indemnification under Section 13.01 shall be limited to, *.
13.04 Procedure. Any party seeking indemnification ("Indemnitee")
shall promptly notify the party liable for such indemnification ("Indemnitor")
in writing of any alleged Liability. The Indemnitor shall have the right to
control the defense thereof with counsel of its choice that is reasonably
acceptable to Indemnitee; provided, however, that any Indemnitee shall have the
right to retain its own counsel at its own expense for any reason. The affected
Indemnitee shall give reasonable cooperation to the Indemnitor and its legal
representatives in the investigation of any action, claim, or liability covered
by this Article 13. The indemnification under this Article 13 shall not apply to
amounts paid by an Indemnitee in settlement of any Liabilities if such
settlement is effected without the consent of the Indemnitor, which consent
shall not be withheld unreasonably. The failure of the Indemnitee to deliver
notice to the Indemnitor within a reasonable time after commencement of a claim
or action, if prejudicial to the ability to defend such claim or action, shall
relieve the Indemnitor of any liability under this Article 13 to the extent of
such prejudice. The Indemnitor shall not be liable to pay legal costs and
attorney's fees incurred by the Indemnitee in establishing its claim for
indemnification.
13.05 Limitation of Liability. With the exception of liability
resulting from *, the liability of each of ExxonMobil and Symyx under this
Article 13 shall be limited to * in the aggregate.
ARTICLE 14
TERM AND TERMINATION
14.01 Term.
14.01.1 Term of Agreement. When duly executed by all
parties, this Agreement shall be effective retroactively to the
Effective Date, and shall continue in full force and effect for the
Research Program Term, unless terminated earlier as provided in this
Article 14.
14.01.2 Extensions. ExxonMobil shall have the right
to extend the Research Program Term, the Software License Term, the
Tool Delivery Period, and the Combinatorial License Term for two (2)
separate * extensions, as follows:
(a) ExxonMobil shall give written notice to Symyx on
or before * if it desires to extend the Research Program Term through
*, and the Software License Term, the Tool Delivery Period, and/or the
Combinatorial License Term for an additional *. In the event ExxonMobil
elects such extension(s) with the same or comparable scope as
49
* Confidential treatment requested
provided in this Agreement, such elected periods will be extended for *
on the terms and conditions set forth in this Agreement. In such event,
the payment provisions in Sections 8.01 through 8.06, inclusive, shall
be extended for such * period; provided, however, that the FTE rates in
Sections 8.01 and 8.02 shall be adjusted to reflect any change in the
cost of living in the period from the Effective Date through *. The
cost of living adjustment shall be measured by *. In the event
ExxonMobil desires to reduce the scope during such extension period,
the parties shall discuss in good faith and mutually agree, no later
than *, on the scope and corresponding changes required to the
Agreement to reflect such reduction in scope.
(b) In the event the Agreement is extended as set
forth in Section 14.01.2(a), ExxonMobil shall give written notice to
Symyx on or before * if it desires to extend the Research Program Term
through *, and the Software License Term, the Tool Delivery Period,
and/or the Combinatorial License Term for *. In the event ExxonMobil
elects such second extension(s) with the same or comparable scope as
provided in this Agreement, such elected periods will be extended for *
on the terms and conditions set forth in this Agreement. In such event,
the payment provisions in Sections 8.01 through 8.06, inclusive, shall
be extended for * period; provided, however, that the FTE rates in
Sections 8.01 and 8.02 shall be adjusted to reflect any change in the
cost of living in the period from the Effective Date through *. The
cost of living adjustment shall be measured by *. In the event
ExxonMobil desires to reduce the scope during such extension period,
the parties shall discuss in good faith and mutually agree, no later
than *, on the scope and corresponding changes required to the
Agreement to reflect such reduction in scope.
14.02 Nonperformance. In the event ExxonMobil believes that Symyx
has breached this Agreement by (a) not using commercially reasonable efforts to
conduct the Research Program, (b) not staffing the Research Program with
qualified and experienced staff consistent with the quality and experience of
the staff Symyx assigns to internal and Third Party research programs, or (c)
not using commercially reasonable efforts to achieve Annual Program Goals or Key
Program Goals, then ExxonMobil shall so notify Symyx, in writing, and Symyx
shall have the option of adding personnel and other resources, at its own
expense, to cure such breach within *. If Symyx does not cure such breach within
this period, ExxonMobil shall have the right to terminate the Research Program
with * notice. The above sentence shall not act as a limitation on any other
rights or remedies available to ExxonMobil under applicable law.
14.03 Evaluation of Effectiveness. No later than *, ExxonMobil will
notify Symyx whether, in ExxonMobil's reasonable judgment, consistent with the
written documentation generated during the normal course of this Agreement,
Symyx has failed to achieve a preponderance of the Annual Program Goals for * of
the Research Program. In such event, ExxonMobil shall have the right to (a)
negotiate a mutually agreeable, narrower, more limited scope for the Research
Program for the remainder of the Research Program Term (provided that neither
party shall be obligated to agree to such a more limited scope) or (b) terminate
the Research Program and the Combinatorial Chemistry license (as set forth in
Article 6) on * notice to Symyx, provided that ExxonMobil's or its Designee's
actions up to that point in time are not a
50
* Confidential treatment requested
substantial cause of Symyx' failure to achieve a preponderance of the Annual
Program Goals for * of the Research Program. *
14.03.1 Wind-down Period. If ExxonMobil exercises
its right under Section 14.03 to terminate the Research Program, during
the * wind-down period, the resource allocation and payments shall be
in accordance with this Agreement as set out prior to the termination
notice, provided that (a) if Symyx is able to redeploy personnel
without adverse financial consequences during * wind-down period, Symyx
will not charge ExxonMobil for such redeployed personnel, (b) Symyx
will not replace personnel lost through natural attrition, and (c) the
parties will mutually agree on how to allocate resources during such *
wind-down period, including reasonable efforts to focus on tool
development and delivery during such * wind-down period.
14.03.2 Rights Following Termination. In the event
this Agreement is terminated under Section 14.03, ExxonMobil shall have
(a) the right to require Symyx during the * wind-down period to
complete and deliver, subject to Section 7.04, all tools in progress
and/or to develop and deliver Discovery Tools Systems based on existing
prototypes developed during the Research Program, and payment therefor
will be as set forth in Article 7; (b) all rights set forth in this
Agreement with respect to research and development activities conducted
through the termination date; (c) a paid up license, as set forth in
Article 7, with respect to all Discovery Tools Systems delivered
pursuant to this Agreement and accepted prior to the termination date
or pursuant to (a) above; and (d) the right to continue the Software
and Developer's Kit Software licenses pursuant to Article 5 and Section
14.01.2, and to continue to receive Software support services from the
* FTEs described in Section 5.01, subject to the payment obligations of
Sections 8.02 and 8.03.
14.03.3 Effect on Software License. In the event
that the Research Program is terminated as provided in this Section
14.03, ExxonMobil may elect to either terminate or keep in force the
Software License and the Developer's Kit Software License pursuant to
Article 5 (together with the provisions of Sections 8.02 and 8.03).
ExxonMobil shall notify Symyx of its election, in writing, at the same
time it provides its termination notice pursuant to Section 14.03.
14.04 Termination Due to Attrition. If, in any * period running from
*, beginning on *, (a) * or more of the employees assigned to execute the
Research Program (excluding Informatics implementation FTEs as set forth in
Section 5.01) as of such * have resigned or are otherwise unavailable to execute
the Program by the following *, and (b) Symyx has failed to achieve a
preponderance of the Annual Program Goals for such * period (following the prior
effectiveness evaluation), then ExxonMobil shall have the right to terminate the
Research Program on * notice to Symyx, provided that ExxonMobil's or its
Designee's actions up to that point in time are not a substantial cause in
Symyx' failure to achieve a preponderance of the Annual Program Goals for such *
period. * During such * wind-down period, the resource allocation and focus of
Symyx' efforts shall be consistent with the description thereof in Section
14.03.1, and ExxonMobil's rights following any such termination shall be as set
forth in Section 14.03.2.
51
* Confidential treatment requested
14.05 Termination of Software License. ExxonMobil, at its sole
option, may terminate the Software License, the Developer's Kit Software
License, and associated Software support pursuant to Section 5.01 at the end of
the * of the Software License Term upon * prior written notice to Symyx. If
ExxonMobil exercises the foregoing right, then (a) no further payments shall be
due under Sections 8.02 and 8.03, (b) Symyx shall refund to ExxonMobil advance
payments, if any, made by ExxonMobil under Sections 8.02 and 8.03 which relate
only to the terminated portion of the Software License Term, and (c) ExxonMobil
and its Majority Owned Affiliates shall immediately discontinue all use of the
Software, the Developer's Kit Software, and all Software Customizations, remove
the Software, the Developer's Kit Software and all Software Customizations from
all workstations, and deliver to Symyx all portions and copies of the Software,
the Developer's Kit Software and any Software documentation provided by Symyx
that may be in their possession (provided that the foregoing shall not affect
the licenses granted pursuant to Section 7.06).
14.06 Termination for Breach. Except as set forth in Section 14.02,
either ExxonMobil or Symyx may terminate this Agreement in the event the other
party materially breaches or defaults in the performance of any of its material
obligations in this Agreement, and such default shall have continued for * after
written notice of breach to the breaching party by the non-breaching party,
provided that a breach with respect to the provisions of Section 4.06 shall not
be deemed a material breach or default under this Section 14.06. Any termination
shall become effective at the end of such * period unless the breaching party
(or any other party on its behalf) has cured any such material breach or default
prior to the expiration of the * period; provided, however, in the case of a
failure to pay any undisputed amounts due hereunder, such default may not be the
basis of termination unless the payment is not received within the calendar
quarter in which it was due.
14.07 Termination for Insolvency. Upon the occurrence of any one of
the following:
(a) commencement by a party of a voluntary case seeking
liquidation, reorganization or other relief under the Bankruptcy Reform Act of
1978, as amended ("Bankruptcy Code") or any bankruptcy, insolvency, or other
similar law now or hereafter in effect:
(b) entry by a court of competent jurisdiction of an order,
judgment, or decree adjudicating a party to be bankrupt or insolvent or of an
order for relief against a party as a debtor in an involuntary case seeking
reorganization, liquidation or similar relief under any present or future
provision of the Bankruptcy Code or any bankruptcy, insolvency or other similar
law now or hereafter in effect;
(c) making by a party of a general assignment for the benefit
of such party's creditors;
(d) filing by a party of an answer or other pleading admitting
or failing to contest the material allegations of a petition filed against such
party in any proceeding of the nature described in Section 14.07(b);
52
* Confidential treatment requested
(e) making by a party of a request for, or granting of consent
to or acquiescence by a party in, the appointment of a trustee, receiver or
liquidator for such party or for all or any substantial part of such party's
properties:
(f) failure of a party to obtain dismissal of an involuntary
case seeking liquidation, reorganization or other relief against such party as
debtor under the Bankruptcy Code or any bankruptcy, insolvency or other similar
law now or hereafter in effect within one hundred twenty (120) days after the
commencement of such case;
(g) failure of a party to obtain a stay or vacatur of the
appointment without the party's consent or acquiescence of a trustee, receiver
or liquidator for such party or for all or any substantial part of such party's
properties within ninety (90) days after such appointment;
(h) failure of a party to obtain vacatur of an appointment
referred to in Section 14.07(g) as to such party or such party's properties
within ninety (90) days after the expiration of any stay of such appointment; or
(i) admission by a party in writing that such party is unable
to pay such party's debts generally as they become due or is otherwise
insolvent;
then any of the other parties may terminate this Agreement upon thirty (30) days
prior written notice to each other party.
14.08 Symyx Tech Fundamental Change.
(a) ExxonMobil shall have the unilateral right to terminate
this Agreement upon * written notice to Symyx in the event any one (1) of the
following occurs:
(i) any Third Party acquires a controlling interest
(right to command or replace management) in Symyx Tech during the
Research Program Term, and such Third Party or any of its majority
controlled affiliates has operations that are *; or
(ii) if Symyx Tech exits, substantially reduces, or
phases-out over a period of time from chemicals research, which change
is viewed by ExxonMobil as harmful to the collaboration with Symyx; or
(iii) if Symyx is prevented from performing a
significant portion of the Research Program duties due to *.
(b) Symyx will notify ExxonMobil promptly upon the occurrence
of any event in Section 14.08(a).
(c) In the event of a termination by ExxonMobil pursuant to
this Section 14.08:
53
* Confidential treatment requested
(i) ExxonMobil shall have full access and rights to
all Program Technology and other work product developed prior to such
termination as set forth in this Agreement;
(ii) the Software licenses pursuant to Article 5 and
the Combinatorial Chemistry licenses pursuant to Article 6 shall remain
in full force and effect through May 31, 2008 without any further
payment obligation on the part of ExxonMobil subsequent to the
termination date and without any obligation on the part of Symyx to
provide Upgrades;
(iii) the cumulative royalty cap specified in Section
8.07.6 shall be reduced to *, except the Uncapped Royalty Project
(which will remain unchanged);
(iv) prior to *, to minimize claims of improper use
of Confidential Information of ExxonMobil and its Affiliates, Symyx
will not undertake any research activities, either by itself or with a
Third Party, within the scope of the Research Projects that were active
at the time of termination (provided that nothing herein shall imply
any right for Symyx to use Program Technology or Exxon Mobil Background
Technology on or after *); and
(v) Symyx shall have no right to use Program
Technology for any purpose in the ExxonMobil Exclusive Fields.
14.09 Effect of Termination.
14.09.1 Accrued Rights and Obligations. Termination
of this Agreement for any reason shall not release either ExxonMobil or
Symyx from any liability or obligation that, at the time of such
termination, already accrued to the other party or which is
attributable to a period prior to such termination nor preclude either
ExxonMobil or Symyx from pursuing any rights and remedies it may have
hereunder or at law or in equity with respect to any breach of this
Agreement. Termination of this Agreement for any reason shall not
affect or impair any rights and licenses granted pursuant to Article 4
or any obligations undertaken pursuant to Article 11 or any * Workflow
exclusivity pursuant to Exhibit H and shall not release ExxonMobil from
any liability or obligation to make payments pursuant to Section 8.07
or 8.08, except as expressly provided in this Agreement.
14.09.2 Return of Confidential Information. Except
as necessary in connection with exercising the accrued rights pursuant
to Section 14.09.1, upon any termination pursuant to Sections 14.02,
14.03, 14.04, 14.06, 14.07, and 14.08, at the request of the Discloser,
ExxonMobil and Symyx shall promptly return to the other all
Confidential Information received from the other party or its
Affiliates which relates to the terminated portion of this Agreement
(except one (1) copy of which may be retained in the secure files of
the retaining party's Law Department for archival purposes and ensuring
compliance with the provisions of this Agreement).
54
* Confidential treatment requested
14.10 Right of ExxonMobil to Terminate. In addition to the other
rights contained in this Article 14, ExxonMobil shall also have the right, at
its sole discretion, to terminate this Agreement effective on *, and any
anniversary thereafter ("Termination Date") by providing at least * prior
written notice to Symyx, subject to the provisions of this Section 14.10, and
provided ExxonMobil makes a payment of * to Symyx on or before the Termination
Date.
14.10.1 Wind-down Period. In the event this
Agreement is terminated under Section 14.10, during the * period prior
to the Termination Date, the resource allocation and payments shall be
in accordance with this Agreement as set out prior to the termination
notice, provided, however, that (a) if Symyx is able to redeploy
personnel without adverse financial consequences during such *
wind-down period, Symyx will not charge ExxonMobil for such redeployed
personnel, (b) Symyx will not replace personnel lost through natural
attrition, and (c) the parties will mutually agree on how to allocate
resources during such * wind-down period, including reasonable efforts
to focus on tool development and delivery during such * wind-down
period.
14.10.2 Rights Following Termination. In the event
this Agreement is terminated under Section 14.10, ExxonMobil shall
have: (a) the right to require Symyx during the * wind-down period to
complete and deliver, subject to Section 7.04, all tools in progress
and/or to develop and deliver Discovery Tools Systems based on existing
prototypes developed during the Research Program, and payment therefor
will be as set forth in Article 7; (b) all rights set forth in this
Agreement with respect to research and development activities conducted
through the Termination Date; (c) a paid up license, as set forth in
Article 7, with respect to all Discovery Tools Systems delivered
pursuant to this Agreement and accepted prior to the Termination Date
or pursuant to Section 14.10.2(a); (d) the Software and Developer's Kit
Software licenses (limited to * named users) pursuant to Article 5 for
* after the Termination Date; and (e) an extension of the Combinatorial
License Term for a period of * after the Termination Date. Following
such * period, ExxonMobil shall have the right to: (i) extend the
Software License Term (limited to * named users), subject to payment to
Symyx of *, payable as provided in Section 8.03, and subject to the
provisions of Exhibit N, and (ii) extend the Combinatorial License Term
as set forth in Section 6.04.
14.10.3 Restrictions Following Termination. In the
event this Agreement is terminated under Section 14.10, (a) the
exclusivity provisions with respect to Discovery Tools Systems as set
forth in Section 7.05 shall terminate as of the Termination Date; and
(b) after providing notice of termination pursuant to this Section
14.10, ExxonMobil and its Designees shall not *.
14.11 Survival. Sections 2.06, 2.07, 2.11, 2.13, 8.04, 8.07, 8.08,
8.09, 8.10 and 12.03(i), and Articles 4, 9, 10, 11, 13, 14 and 15 of this
Agreement shall survive the expiration or termination of this Agreement for any
reason. The provisions of Article 5 shall survive for as long as the Software
licenses set forth therein continue under this Agreement; at such time as such
Software licenses expire or are terminated under this Agreement, Sections 5.06,
5.07(b), 5.07(c), and 5.09 shall survive such expiration or termination. The
provisions of Article 6 shall
55
* Confidential treatment requested
survive for the duration of the Combinatorial License Term; at such time as such
Combinatorial License Term expires or is terminated under this Agreement,
Section 6.03 shall survive such expiration or termination. The provisions of
Article 7 shall survive for the duration of the Tool Delivery Period; at such
time as such Tool Delivery Period expires or is terminated under this Agreement,
Sections 7.05, 7.06, 7.07, 7.08, 7.09, 7.10, 7.11, 7.12, 7.13, 7.14 and 7.15
shall survive such expiration or termination.
ARTICLE 15
MISCELLANEOUS
15.01 Governing Laws. This Agreement will be governed by and
construed in accordance with the laws of the State of New York, excluding
reference to the conflicts of law principles of the State of New York.
15.02 Limitation of Liability. *
15.03 No Implied License. Only the licenses granted pursuant to the
express terms of this Agreement shall be of any legal force or effect. No other
license rights shall be created by implication, estoppel, or otherwise.
15.04 Waiver; Modification. Any waiver of any right or default
hereunder will be effective only in the instance given and will not operate as
or imply a waiver of any other or similar right or default on any subsequent
occasion. No waiver or modification of this Agreement or of any provision hereof
will be effective unless in writing and signed by the party against whom such
waiver or modification is sought to be enforced.
15.05 Assignment. Neither ExxonMobil nor Symyx shall assign this
Agreement or any rights or obligations hereunder without the prior written
consent of the other; provided, however, that subject to the restrictions in
Section 14.08, ExxonMobil or Symyx may assign this Agreement without such
consent in connection with a sale of all or substantially all of the business or
assets of the assigning party, whether by merger, reorganization, acquisition,
sale or otherwise. In addition, ExxonMobil may assign its interest in this
Agreement or any rights or obligations hereunder to any Majority Owned Affiliate
without the prior written consent of Symyx, provided that ExxonMobil shall
remain responsible for performance of all obligations of the assignee hereunder.
Any attempted or purported assignment without such required consent will be
void. Subject to the foregoing, this Agreement will be binding upon and will
inure to the benefit of the parties and their respective permitted successors
and assigns.
15.06 Relationship of Parties. ExxonMobil and Symyx do not intend to
create a partnership, association, or joint research and development arrangement
by entering into and performing this Agreement. The duties, obligations and
liabilities of ExxonMobil and Symyx are intended to be separate and not joint or
collective and nothing contained in this Agreement will be construed to create a
partnership or association or to impose a partnership duty, obligation, or
liability with respect to ExxonMobil or Symyx.
56
* Confidential treatment requested
15.07 Representation by Legal Counsel. ExxonMobil and Symyx were
represented by legal counsel in connection with this Agreement and acknowledge
that they participated in the drafting of this Agreement. In interpreting and
applying the terms and provisions of this Agreement, no presumption shall exist
or be implied against the party that initially drafted such terms and
provisions.
15.08 Duty to Negotiate. Any good faith duty to negotiate contained
in this Agreement shall in no way obligate the parties to reach mutual agreement
and no liability shall result from any failure to reach agreement.
15.09 Affiliates. ExxonMobil may, at its sole discretion, fulfill
some or all of its obligations by or through its Affiliates. ExxonMobil may
grant sublicenses under the Program Technology to its Affiliates as set forth in
and subject to the terms and conditions of this Agreement. ExxonMobil shall
remain responsible for the performance by its Affiliates of all applicable
obligations under this Agreement.
15.10 Compliance with Laws. In exercising their rights and
obligations contained in this Agreement, each party shall fully comply with the
requirements of any and all applicable laws, regulations, rules, and orders of
any governmental body having jurisdiction over activities conducted pursuant to
this Agreement including all relevant federal, state or local safety,
environment, and health laws, rules, regulations, or orders. ExxonMobil and
Symyx shall reasonably cooperate with one another with respect to providing
information necessary in support of tax filings.
15.11 Export Control Regulations. Each party hereto ("Recipient")
acknowledges that the technology, software, services, or commodities provided by
the other ("Discloser") or the Discloser's Affiliates may be subject to laws or
regulations restricting their export, reexport, transfer, or release to certain
governments, legal entities, or individuals and/or to certain destinations,
including those laws and regulations administered by the U.S. Department of
Commerce (Bureau of Industry and Security) and the U.S. Department of the
Treasury (Office of Foreign Assets Control).
With respect to any export, reexport, transfer, or release
otherwise permitted under this Agreement to persons within Recipient or its
Affiliates, or to unrelated Third Parties, of (a) such technology, software,
services, or commodities; or (b) the direct product of any such technology; or
(c) any product that Recipient creates with U.S.-origin content that is supplied
by Discloser or its Affiliates; or (d) any technology that Recipient creates
that is based upon or commingled with technology provided by Discloser or its
Affiliates, Recipient shall comply with all applicable U.S. government
requirements, including export and reexport controls expressed in the U.S.
Export Administration Regulations, prohibitions on transactions with or
transfers to the governments of, parties located in or operated from, or
nationals of countries subject to comprehensive U.S. sanctions (currently, Cuba,
Iran, Iraq, Libya, and Sudan), and prohibitions on transactions with or
transfers to entities or individuals identified on the U.S. government's List of
Specially Designated Nationals and Blocked Persons (Treasury Department) and
Denied Persons List and Entity List (Commerce Department).
57
15.12 Sections and Headings. The various headings contained in this
Agreement are for convenience of reference only and are not intended to define,
limit, expand, or describe the scope or intent of any clause or provision of
this Agreement.
15.13 Correspondence. Correspondence relative to this Agreement
shall be addressed as set forth below (or as updated by either party upon
written notice). Any notice required or permitted by this Agreement (a) must be
in writing, (b) must be sent by facsimile, by recognized commercial overnight
courier, or mailed by United States registered or certified mail with signature
upon delivery, and (c) shall be effective upon receipt.
If to Symyx Tech:
Symyx Technologies, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: President
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
With a copy to:
Vice President, Alliances and Legal
Affairs
If to Symyx DTools:
Symyx Discovery Tools, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: President
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
With a copy to: Treasurer
If to ExxonMobil:
ExxonMobil Research and Engineering Co.
▇▇▇▇ ▇▇▇▇▇ ▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: Vice President - R & D
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
With a copy to: Chief Attorney
15.14 Severability. In the event that any provision of this
Agreement becomes or is declared by a court of competent jurisdiction to be
illegal, unenforceable or void, this Agreement
58
shall continue in full force and effect to the fullest extent permitted by law
without said provision, and the parties shall amend this Agreement to the extent
feasible to lawfully include the substance of the excluded term to as fully as
possible realize the intent of the parties and their commercial bargain.
15.15 Force Majeure. In the event that either ExxonMobil or Symyx is
unable to perform any of its material obligations under this Agreement because
of any event beyond the control of the affected party including, but not limited
to, natural disaster, acts of God, acts of war or terrorism, extreme weather,
fire, or other natural calamity, epidemics, labor disputes or shortages of
labor, embargoes, inability to secure necessary parts or raw materials, a
failure of a party's suppliers to perform due to any of the foregoing,
expropriation or other actions or decrees of governmental bodies ("Force Majeure
Event"), the party who has been so affected shall promptly give written notice
to the other parties and shall use reasonable efforts to resume performance.
Upon receipt of such notice, all obligations under this Agreement related to or
affected by the Force Majeure Event shall be immediately suspended for the
duration of such Force Majeure Event. In the event the Force Majeure Event is
not cured within * after notice, the other party may terminate this Agreement as
to the matters relating to the Force Majeure Event.
15.16 Complete Agreement. (a) This Agreement, with its Exhibits,
constitutes the entire agreement, both written and oral, between the parties
with respect to the subject matter hereof. No amendment or change hereof or
addition hereto shall be effective or binding on either of the parties hereto
unless reduced to writing and executed by the respective duly authorized
representatives of Symyx and ExxonMobil. In the event of a conflict between the
terms and conditions of Articles 1 through 15 of this Agreement and those of its
Exhibits, the former shall govern.
(b) Except as expressly provided in Section 2.01.3, all prior
agreements between Symyx and ExxonMobil or EMCC shall remain in full force and
effect; provided, however, that (i) if any such prior agreement and this
Agreement both contain a specific provision directed to a particular issue, the
provision most favorable to ExxonMobil, as determined by ExxonMobil, shall
govern, (ii) the provisions directed to *, as contained in the Sale and License
Agreement between Symyx Tech and EMCC entered into as of September 29, 2000, as
amended, and the Development Agreement between Symyx Tech and EMCC entered into
as of September 29, 2000, as amended, shall not be subject to (i) of this
Section 15.16(b), and (3) the provisions of Section 7.07 of this Agreement shall
be applicable to the Discovery Tools System subject to the agreements referred
to in (ii) of this Section 15.16(b).
59
* Confidential treatment requested
15.17 Dispute Resolution.
15.17.1 Negotiation. In the event that any dispute
arising out of or related to this Agreement is not resolved by the
Executive Committee, the parties shall make a good faith attempt to
resolve such dispute through negotiation. Within * after ExxonMobil or
Symyx gives written notice of a dispute to the other parties, the
parties shall discuss and make a good faith attempt to resolve such
dispute.
15.17.2 Arbitration. Any dispute arising out of or
related to this Agreement that has not been resolved by negotiation
within * after a notice of dispute under Section 15.17.1 shall be
finally resolved by binding arbitration, conducted in accordance with
the procedures set forth in Exhibit S.
15.17.3 Injunctive Relief. No provision in this
Section 15.17 shall prevent any party from approaching any court having
competent jurisdiction to seek injunctive relief in case of urgency to
prevent disclosure of Confidential Information.
15.18 Sub-Contractors. Symyx may subcontract any of its
manufacturing obligations to any Third Party provided Symyx remains responsible
under the terms hereof at all times for the performance of its subcontractors.
Symyx shall notify ExxonMobil, in writing, prior to the use of any subcontractor
under this Agreement performing research and development activities in areas
relevant to ExxonMobil's operations. ExxonMobil shall have the right to reject
the use of subcontractors within * after notice. To the extent allowed by Symyx'
agreements with its subcontractors, ExxonMobil's audit rights set forth in
Section 9.04 shall extend to Symyx' sub-contractors. ExxonMobil may withhold its
consent to use a subcontractor until such audit rights are obtained from the
subcontractor.
15.19 Independent Contractor. Symyx will perform the research and
development activities hereunder as an independent contractor. The methods and
details of performing such activities shall be under Symyx' direction and
control. Symyx will keep ExxonMobil's designated representatives advised as to
the status of all major work conducted hereunder and will permit persons
designated by ExxonMobil to be present as observers for tests, inspections and
other work conducted hereunder. ExxonMobil will provide reasonable notice to
Symyx that such observers will be present. Nothing contained in this Agreement
shall be construed to (a) give ExxonMobil the power to direct or control the
day-to-day activities of Symyx or (b) constitute the parties as partners, joint
venturers, franchisees, co-owners or otherwise as participants in a joint or
common undertaking for any purpose.
15.20 Special Agreement Persons. Symyx shall be responsible for any
and all employee benefits to be provided for its employees. Symyx shall advise
its employees that none of its employees shall be entitled to participate in or
receive benefits from any employee benefit plan sponsored by ExxonMobil as a
result of performing services under this Agreement. Individuals performing
activities for ExxonMobil under this Agreement shall be considered "special
agreement persons" who are specifically excluded from coverage under the terms
of the Benefit Plan of Exxon Mobil Corporation and Participating Affiliates and
shall not be considered
60
* Confidential treatment requested
"regular employees" or "non-regular employees" of Exxon Mobil Corporation or any
of its Affiliates for purposes of plan participation.
15.21 Business Standards. Symyx shall establish and maintain
precautions to prevent its employees, agents or representatives from making,
receiving, providing, or offering substantial gifts, entertainment, payments,
loans, or other consideration to employees, agents, or representatives of
ExxonMobil for the purpose of influencing those persons to act contrary to the
best interests of ExxonMobil. This obligation shall apply to the activities of
the employees of Symyx in their relations with the employees of ExxonMobil and
their families and/or Third Parties arising from the Agreement. ExxonMobil shall
establish and maintain precautions to prevent its employees, agents or
representatives from making, receiving, providing, or offering substantial
gifts, entertainment, payments, loans, or other consideration to employees,
agents, or representatives of Symyx for the purpose of influencing those persons
to act contrary to the best interests of Symyx. This obligation shall apply to
the activities of the employees of ExxonMobil in their relations with the
employees of Symyx and their families and/or Third Parties arising from the
Agreement.
15.22 Accuracy of Records. All financial settlements, ▇▇▇▇▇▇▇▇, and
reports rendered to ExxonMobil by Symyx or to Symyx by ExxonMobil shall reflect
properly the facts about all activities and transactions, which data may be
relied upon as being complete and accurate in any further recordings and
reportings made by ExxonMobil or Symyx, as applicable, for whatever purpose.
15.23 Notice of Non-Compliance. Symyx and ExxonMobil shall notify
the other promptly upon discovery of any instance where such party fails to
comply with Section 15.10, 15.21 or 15.22. If Symyx discovers or is advised of
any errors or exceptions related to its invoicing to ExxonMobil, Symyx and
ExxonMobil will together review the nature of the errors or exceptions, and
Symyx will, if appropriate, promptly adjust the relevant invoice(s) or refund
overpayments.
15.24 Drug and Alcohol Policy and Workplace Harassment Policy. Symyx
shall comply with the requirements contained in Exhibit T and Exhibit W.
15.25 Trademarks and Publicity. Symyx and its Affiliates shall not,
without the express prior written consent of ExxonMobil (a) use the name or any
tradename or trademark of Exxon Mobil Corporation or any of its Affiliates
(unless expressly authorized by such Affiliate) in any advertising or
communications to the public in any format or make any public statements from
which such name can be inferred; or (b) make publicity releases or announcements
regarding this Agreement, except pursuant to Section 11.03. ExxonMobil and its
Affiliates shall not, without the express prior written consent of Symyx (a) use
the name or any tradename or trademark of Symyx or any of its Affiliates in any
advertising or communications to the public in any format or make any public
statements from which such name can be inferred; or (b) make publicity releases
or announcements regarding this Agreement, except pursuant to Section 11.03.
Notwithstanding the foregoing, the parties shall agree upon a press release to
announce the execution of this Agreement, and Symyx and ExxonMobil may each
thereafter disclose to Third
61
Parties the information contained in such press release without the need for
further approval by the other.
15.26 Counterparts. This Agreement may be executed in counterparts,
each of which shall be deemed to be an original and all of which together shall
be deemed to be one and the same agreement.
15.27 EMCC Consent to Supersede and Terminate the CRDLA. Subject to
Section 2.01.3, EMCC hereby agrees that (a) this Agreement shall supersede the
CRDLA as set forth herein and (b) the CRDLA is terminated as of the Effective
Date.
ExxonMobil Chemical Company,
a division of Exxon Mobil Corporation
By:_________________________________
Title:_____________________________
Date:_______________________________
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed by their authorized representatives and delivered in duplicate
originals as of the Effective Date.
SYMYX TECHNOLOGIES, INC. SYMYX DISCOVERY TOOLS, INC.
By:_________________________________ By:___________________________
Title:______________________________ Title:________________________
Date:_______________________________ Date:_________________________
EXXONMOBIL RESEARCH AND ENGINEERING COMPANY
By:_________________________________
Title:_____________________________
Date:_______________________________
62
EXHIBIT A
DEFINITIONS
1. "ADDED VALUE" shall have the meaning set forth in Exhibit L.
2. "ADVISORY COMMITTEE" shall have the meaning set forth in Section
3.06.
3. (a) "AFFILIATE" shall mean, with respect to Symyx, any entity
controlled by, controlling, or under common control with Symyx. For purposes of
this Agreement, direct or indirect beneficial ownership of * or more of the
stock entitled to vote in the election of directors or, if there is no such
stock, * or more of the ownership interest in such entity shall be deemed to
constitute control, but such individual or entity shall be deemed to be an
Affiliate only so long as such control exists.
(b) "AFFILIATE" shall mean, with respect to ExxonMobil, Exxon Mobil
Corporation and any successor in interest, any Business which at the time in
question Controls Exxon Mobil Corporation ("Parent"), and/or any Business which
Exxon Mobil Corporation or Parent at the time in question directly or indirectly
Controls. "Business" means any corporation, partnership, limited liability
company, association, venture, or other form of entity. "Control" means the
direct or indirect ownership or holding of stock, shares, interests, indicia of
equity, or voting or other rights entitled (i) to vote for the election of at
least * of the directors or their functional equivalents of the Business and/or
(ii) to establish, direct, or command management of the Business. For purposes
of this definition, * shall be deemed to be an Affiliate of ExxonMobil, but only
for so long as Exxon Mobil Corporation's direct or indirect equity interest in *
is at least as great as on the Effective Date of this Agreement.
(c) "MAJORITY OWNED AFFILIATE" shall mean, with respect to
ExxonMobil, (i) Exxon Mobil Corporation (including all divisions thereof), (ii)
Parent, and (iii) any Business as to which Exxon Mobil Corporation or Parent, at
the time in question, has direct or indirect beneficial ownership of greater
than * of the stock entitled to vote in the election of directors or, if there
is no such stock, greater than * of the ownership interest in such Business.
(d) "DESIGNEE" shall mean an Affiliate (i) to which ExxonMobil has
assigned or extended rights as permitted in this Agreement and (ii) which has
been designated by ExxonMobil to act pursuant to a particular provision[s] of
this Agreement.
4. "ANNUAL PROGRAM GOALS" shall have the meaning set forth in Section
1.04.
5. "BACKGROUND TECHNOLOGY" shall mean ExxonMobil Background Technology
and Symyx Background Technology.
5.01 "EXXONMOBIL BACKGROUND TECHNOLOGY" shall mean all
information and Materials, and all intellectual property rights related
thereto, which are (a) owned or controlled by ExxonMobil or its
Affiliates as of * or (b) developed or acquired by or on
A-1
* Confidential treatment requested
behalf of ExxonMobil or its Affiliates after * and without the use of
Symyx Confidential Information, Symyx Background Technology, or
Unpublished Program Technology.
5.02 "SYMYX BACKGROUND TECHNOLOGY" shall mean all
information and Materials, and all intellectual property rights related
thereto, which are (a) owned or controlled by Symyx or its Affiliates
as of * or (b) developed or acquired by or on behalf of Symyx or its
Affiliates after * and without the use of ExxonMobil Confidential
Information, ExxonMobil Background Technology, or Unpublished Program
Technology.
6. "COMBINATORIAL CHEMISTRY" shall mean techniques, methodologies,
instrumentation, or software directed to the simultaneous, parallel, or rapid
serial Laboratory Scale: (a) synthesis, (b) processing, (c) analysis, or (d)
characterization of more than * Materials. "Laboratory Scale" as used in this
Agreement shall mean activities not involving production of greater than * per
day of such Materials.
6.01 "COMBINATORIAL CHEMISTRY TECHNOLOGY" shall mean
Combinatorial Chemistry Know-How and Combinatorial Chemistry Patent
Rights, in each case developed in conducting the research and
development activities under this Agreement.
6.01.1 "COMBINATORIAL CHEMISTRY KNOW-HOW" shall
mean Combinatorial Chemistry inventions, information,
techniques, methodologies, instrumentation, software, data, or
equipment, excluding any inventions claimed in the
Combinatorial Chemistry Patent Rights.
6.01.2 "COMBINATORIAL CHEMISTRY PATENT RIGHTS"
shall mean (a) U.S. and foreign patent applications to the
extent they claim any Combinatorial Chemistry inventions or
discoveries, (b) all divisions, substitutions, continuations,
continuation-in-part applications, reissues, re-examinations,
and term extensions of (a) above and (c) patents, utility
models, or similar grants of rights issuing from (a) or (b)
above.
6.01.3 Notwithstanding the foregoing, Combinatorial
Chemistry Technology shall not include:
(i) techniques, methodologies,
instrumentation, software, or other information or
Materials in the public domain; or
(ii) techniques, methodologies,
instrumentation, software, or other information or
Materials already known to ExxonMobil or its
Affiliates as of *, as evidenced by written records
or other competent evidence; or
(iii) work product (including all related
intellectual property rights) of ExxonMobil and
ExxonMobil Affiliate personnel or contractors
developed outside of conducting the research and
development activities under this Agreement and
without utilizing Symyx Confidential Information; or
A-2
* Confidential treatment requested
(iv) results of the use of Combinatorial
Chemistry performed under this Agreement, the Interim
Alliance Agreement, the Interim Agreement, and the
CRDLA, including without limitation, Materials, the
right to make or have made Materials on a
non-simultaneous, non-parallel, or non-rapid serial
Laboratory Scale, the right to use and sell
Materials, the right to make, have made, use, and
sell equipment to manufacture Materials on a
non-Laboratory Scale basis, process technology on a
non-Laboratory Scale basis, and recipes or portions
thereof for Materials synthesis; or
(v) techniques, methodologies,
instrumentation, software, or other information or
Materials obtained by ExxonMobil or its Affiliates
from a Third Party as a matter of right without an
obligation of confidentiality or restriction on use.
7. "COMBINATORIAL LICENSE TERM" shall have the meaning set forth in
Section 6.01.
8. "CONFIDENTIAL INFORMATION" shall mean any information disclosed by
one party or its Affiliates to the other party or its Affiliates or their
representatives in connection with this Agreement which is in written, graphic,
machine readable, or other tangible form and which is marked "Confidential" or
"Proprietary" or in some other manner to indicate its confidential nature.
Confidential Information shall also include information that is disclosed orally
or by observation, provided that such information is identified as confidential
at the time of disclosure and confirmed in writing as confidential within thirty
(30) days after such disclosure. Data and information generated in the Research
Program from ExxonMobil Proprietary Materials shall be ExxonMobil Confidential
Information.
9. *
10. "CRDLA" shall mean the Collaborative Research, Development and
License Agreement between EMCC and Symyx Tech effective as of September 1, 2001
(Law 2001-2195), as amended by Amendment No. 1 to Collaborative Research,
Development and License Agreement effective as of May 15, 2002 and by Amendment
No. 2 to Collaborative Research, Development and License Agreement effective as
of June 30, 2003.
11. "DEVELOPER'S KIT SOFTWARE" shall mean machine readable, object code
versions, provided to ExxonMobil and its Majority Owned Affiliates pursuant to
Article 5, of Symyx Library Studio(R) software, Developer's Version, and Symyx
Impressionist(R) software, Developer's Version, and related documentation.
12. "DISCOVERY TOOLS(R)SYSTEM" shall mean a system of hardware and
related software for Combinatorial Chemistry, which system has been developed
and hardened in the sense of being ready for commercialization by Symyx.
13. "EFFECTIVE DATE" shall mean April 1, 2003.
A-3
* Confidential treatment requested
14. "EMCC" shall mean ExxonMobil Chemical Company, a division of Exxon
Mobil Corporation.
15. "EXECUTIVE COMMITTEE" shall have the meaning set forth in Section
3.07.
16. "EXXONMOBIL" shall mean ExxonMobil Research and Engineering
Company.
17. "EXXONMOBIL BUSINESS AREAS" shall mean*.
18. "EXXONMOBIL DTOOL IMPROVEMENTS" shall mean any and all
improvements, enhancements, changes, or modifications to a Discovery Tools
System that ExxonMobil or its Affiliates conceive, reduce to practice, or
otherwise develop, but shall not refer to techniques or technology (a) which are
developed by ExxonMobil or its Affiliates independent of Symyx Confidential
Information, but used in connection with such Discovery Tools System, and (b)
which do not involve a direct modification of or to the Discovery Tools System.
19. "EXXONMOBIL EXCLUSIVE FIELDS" shall mean*.
20. "EXXONMOBIL'S INTERNAL ACTIVITIES" shall mean all research,
development and commercialization (including research and development in support
of licensing) activities of ExxonMobil or its Majority Owned Affiliates
(including activities of employees of ExxonMobil or Majority Owned Affiliates
that are seconded to an Affiliate or joint venture), and includes joint
research, development or commercialization activities undertaken by ExxonMobil
or its Majority Owned Affiliates with Third Parties or Affiliates, each as
consistent with the usual and customary business practices of ExxonMobil or its
Majority Owned Affiliates (including if ExxonMobil or a Majority Owned Affiliate
is reimbursed or paid for such work), but shall exclude research, development or
commercialization activities performed on behalf of Third Parties (other than
joint activities described above).
21. "FTE" shall mean a full-time employee or contractor dedicated to
the conduct of the Research Program or the Software Deployment Plan (all
technical personnel, including scientists, engineers, technicians and
Informatics personnel), or, in the case of less than full-time dedication, a
full-time equivalent person-year, based on a total of *, of work on or directly
related to the Research Program or the Software Deployment Plan. Non-technical
support personnel (e.g. secretarial, legal, patent, business development, human
resources, finance, purchasing, shipping and receiving, food service) are
included in the FTE rate, and will not be deemed FTEs.
22. "GENERALLY ACQUIRED SKILLS" shall mean general skills acquired by
employees of a party or its Affiliates working on the Research Program, but
shall not include (a) Program Patents, (b) Novel Materials, (c) Novel Process
Technology, or (d) information, results, or analysis generated in or by the
Research Program contained in a documented report with respect to the Research
Program. Further, with respect to a given party and its Affiliates, Generally
Acquired Skills shall not include Confidential Information or Background
Information of any other party to this Agreement or its Affiliates.
A-4
* Confidential treatment requested
23. "-*
24. "*
25. "INCREMENTAL ADD-ON" shall mean hardware and/or software added to
an existing Discovery Tools System for the purpose of enhancing the utility
and/or functionality of such system, but without significantly altering the
overall capability of such system.
26. "INDEPENDENT RESEARCH" shall mean research done by, or on behalf
of, a party or an Affiliate of a party outside of the Research Program, entirely
without the use of Confidential Information or non-public Background Technology
of any other party to this Agreement or its Affiliates and without the use of
Unpublished Program Technology.
27. "INFORMATICS" shall mean integrated software for use in the
management of research and development data, including without limitation,
software for design of experiments, lab automation, data capture, data storage,
data integration, data retrieval, data visualization, and data analysis.
28. "INTERIM AGREEMENT" shall mean, collectively, the Interim Research
and Development Agreement effective as of November 15, 2000 between EMCC and
Symyx Tech, as amended by Amendment No. 1 to Interim Research and Development
Agreement entered into effective as of the 1st day of January, 2001, and
Amendment No. 2 to Interim Research and Development Agreement entered into
effective as of the 1st day of May, 2001.
29. "INTERIM ALLIANCE AGREEMENT" shall mean the Interim Alliance,
Technology Transfer, and License Agreement effective April 1, 2003 between EMCC,
ExxonMobil, Symyx Tech, and Symyx DTools.
30. "KEY PROGRAM GOALS" shall have the meaning set forth in Section
1.03.
31. "LIBOR" shall mean the one (1) month London Interbank Offered Rate
for U.S. dollars, as published by the "Financial Times" on the day payment was
due.
32. "LICENSEE" shall mean, with respect to a particular Material and/or
Product, a Third Party to whom ExxonMobil or its Affiliate has granted a license
or sublicense to make, have made, use and/or sell such Material and/or Product.
33. "MANUFACTURING COSTS" shall mean
33.01 *
34. "MATERIAL" shall mean*
34.01 "AGREEMENT MATERIAL" shall mean any Lead Material or
Derivative Material.
A-5
* Confidential treatment requested
34.02 "DERIVATIVE MATERIAL" shall mean any Material that is
made by or under authority of ExxonMobil or an ExxonMobil Affiliate
(but not by Symyx) subsequent to the synthesis or identification of a
Lead Material if:
(i) it is prepared from a chemical or physical
modification of the Lead Material; or
(ii) it is prepared utilizing a synthesis recipe that
is documented in the Research Project from which the Lead
Material resulted, or a modification thereof, and the Material
that results was prepared with the intent of preparing an
improved Lead Material for the same use; or
(iii) it is within the scope of the claims of a
Program Patent for the Lead Material; or
(iv) it is a Material that is prepared from another
Derivative Material.
Notwithstanding the above, no Material will be deemed to be a
Derivative Material if it resulted from Independent Research or if
prepared * after the confirmation of the Lead Material to which it
corresponds, such confirmation to be effected in accordance with
Exhibit F hereto, unless such Derivative Material is included within
(i) through (iv) during such *. Derivative Materials shall only become
subject to the royalty obligations set forth in this Agreement
following selection of a Research Project as a Royalty-Bearing Project
in which the corresponding Lead Material was identified, and then, only
to the extent that they are utilized within the scope of the
Royalty-Bearing Project for the corresponding Lead Material. Once Symyx
has selected all * Royalty-Bearing Projects, Derivative Materials with
royalty-bearing obligations shall be limited to only those Derivative
Materials that correspond to Lead Materials in the *. Following
expiration of the time period set forth in 8.07.9, Derivative Materials
with royalty-bearing obligations shall be limited to only those
Derivative Materials that correspond to Lead Materials in the *
Royalty-Bearing Projects*.
34.03 "EXXONMOBIL PROPRIETARY MATERIAL" shall mean any
Material that is (a) (i) supplied by ExxonMobil or an ExxonMobil
Affiliate for use in the Research Program or (ii) synthesized or
prepared by Symyx for use in the Research Program pursuant to a recipe
provided to Symyx by ExxonMobil or an ExxonMobil Affiliate where
ExxonMobil or an ExxonMobil Affiliate previously has synthesized such
Material pursuant to such recipe and performed basic characterization
of such Material (as would be performed by one skilled in the art), and
(b) within the scope of one or more claims of a valid, enforceable
patent or patent application or is a trade secret owned or controlled
by ExxonMobil or an ExxonMobil Affiliate or under which ExxonMobil or
an ExxonMobil Affiliate is licensed by a Third Party. Any Material
whose starting point was an ExxonMobil Proprietary Material shall
remain an ExxonMobil Proprietary Material unless it is modified to
become a Novel Material. An ExxonMobil Proprietary Material can be a
Lead Material only within the ExxonMobil Exclusive Field for which it
was tested and confirmed as a Lead Material in the Research Program.
A-6
* Confidential treatment requested
Although a Material may not be supplied by ExxonMobil
or an ExxonMobil Affiliate to Symyx for use in the Research Plan, it is
possible that Symyx Tech, as a result of conducting the Research
Program with ExxonMobil, may nonetheless synthesize a Material that is
(i) within the scope of one or more claims of a valid, enforceable
patent or patent application owned or controlled by ExxonMobil or an
ExxonMobil Affiliate, or (ii) a trade secret owned or controlled by
ExxonMobil or an ExxonMobil Affiliate or under which ExxonMobil or an
ExxonMobil Affiliate is licensed by a Third Party. In such event, such
Material shall be treated as an ExxonMobil Proprietary Material under
this Agreement with respect to activities taking place after the point
in time that ExxonMobil or an ExxonMobil Affiliate notifies Symyx that
such Material is an ExxonMobil Proprietary Material. Such Material
shall not be treated as an ExxonMobil Proprietary Material for all
purposes under this Agreement with respect to activities taking place
prior to such notification. However, if Symyx has knowingly produced
Materials based on a valid, enforceable patent owned or controlled by
ExxonMobil or an ExxonMobil Affiliate and claiming an ExxonMobil
Proprietary Material, such produced Materials shall be considered
ExxonMobil Proprietary Materials at the time such Materials are first
produced in the Research Program.
34.04 "LEAD MATERIAL" shall mean any Material (including a
Novel Material) synthesized or identified within the Research Program
and which meets the specific physical, chemical and/or catalytic
properties initially established in the Research Plan, or as modified
by the Advisory Committee pursuant to Article 3, for identifying a Lead
Material. The procedure for confirming a Lead Material is set forth in
Exhibit F hereto. Any Material that is synthesized or identified
(including an ExxonMobil Proprietary Material) in an active Research
Project and transferred or made known by Symyx to ExxonMobil or an
ExxonMobil Affiliate and subsequently commercialized by or under
authority of ExxonMobil or its Affiliates in the Research Project for
which it was identified shall be deemed a Lead Material.
34.05 "NOVEL MATERIAL" shall mean a Material that is (a)
first synthesized or prepared in the Research Program [except where (i)
ExxonMobil or an ExxonMobil Affiliate provides Symyx with the recipe
for synthesizing or preparing such Material as set forth in definition
of "ExxonMobil Proprietary Material" above and (ii) ExxonMobil or an
ExxonMobil Affiliate has performed basic characterization of such
Material as would be performed by one skilled in the art], and is (b)
patented, as determined by the United States Patent and Trademark
Office, together with methods of manufacturing the same. For the
purposes of this Agreement, Public Domain Materials are not Novel
Materials, unless a Public Domain Material is modified in the Research
Program so as to become a Novel Material. In the event that a Program
Patent is issued in the U.S. with claims directed to a Material first
synthesized or prepared in the Research Program and subsequently all
such claims are finally determined to be unpatentable or invalid, such
Material shall not be treated as a Novel Material for purposes of this
Agreement on a going forward basis after the date of such final
determination.
A-7
34.06 "PUBLIC DOMAIN MATERIAL" shall mean any Material that
is available for use by members of the public without restriction.
35. "NET INCOME" shall mean *.
36. "NET SALES OR USE" shall mean *.
37. "NOVEL PROCESS TECHNOLOGY" shall mean a method or process
(including but not limited to a process for using or synthesizing a Material)
that is (a) first developed in the Research Program, and (b) patented as
determined by the United States Patent and Trademark Office or which ExxonMobil
or its Designee elects to maintain as a trade secret. The Research Committee for
the Project in which it was identified shall document a Novel Process Technology
within * of its being made known to the Research Committee. Notwithstanding the
foregoing, in the event that ExxonMobil or its Designee elects to file a Program
Patent application in the U.S. with claims directed to a method or process first
identified in the Research Program, said method or process shall be treated as a
Novel Process Technology for purposes of this Agreement (unless and until the
claims in such U.S. application, or any continuation or divisional thereof,
directed to such method or process are finally determined to be unpatentable).
In the event that a Program Patent is issued in the U.S. with claims directed to
a Novel Process Technology first created in the Research Program and
subsequently all such claims are finally determined to be unpatentable or
invalid, such method or process shall not be treated as a Novel Process
Technology for purposes of this Agreement on a going forward basis after the
date of such final determination. In the event ExxonMobil or its Designee elects
to maintain a method or process as a trade secret, and such method or process
becomes available for use by members of the public without restriction, through
no action or inaction on the part of ExxonMobil or its Affiliates, such method
or process shall not be deemed Novel Process Technology after such time as it
becomes available for use by members of the public without restriction.
38. "OPTIONAL FIELDS" shall mean those research areas that are set
forth on Exhibit C hereto.
39. *.
40. "PRIMARY SCREENING" shall refer to high throughput synthesis or
screening * with throughput significantly higher than Symyx' secondary screening
devices generally made available to Third Parties as Discovery Tools (e.g.
PPR(R) and multi-channel fixed bed reactors). "Non-Primary Screening" shall mean
all synthesis or screening activities that are not Primary Screening activities.
41. "PRODUCT" shall mean (a) an Agreement Material, (b) implementation
of a Novel Process Technology, or (c) any product that (i) contains an Agreement
Material, (ii) utilizes in its manufacture and/or production a Novel Process
Technology, or (iii) utilizes an Agreement Material in its manufacture and/or
production, e.g., as a catalyst or membrane.
42. "PROGRAM TECHNOLOGY" shall mean Program Patents and Program
Know-How.
A-8
* Confidential treatment requested
42.01 "PROGRAM KNOW-HOW" shall mean inventions,
information, data, or Materials developed by Symyx, or by ExxonMobil or
an ExxonMobil Affiliate, or jointly by Symyx and ExxonMobil or an
ExxonMobil Affiliate, in each case as part of the Research Program that
are useful for the manufacture, use or sale of Products; provided,
however, that Program Know-How shall not include any Background
Information or Confidential Information or Combinatorial Chemistry
Technology or any inventions claimed in the Program Patents.
42.02 "PROGRAM PATENTS" shall mean (a) all U.S. and foreign
patent applications based on any inventions or discoveries conceived or
reduced to practice as part of the Research Program by Symyx, or by
ExxonMobil or an ExxonMobil Affiliate, or jointly by Symyx and
ExxonMobil or an ExxonMobil Affiliate, so long as such application
claims a Product, a method or process for the manufacture of a Product,
a method or process for the use of an Agreement Material in or for the
manufacture of a Product, a Novel Material, or a Novel Process
Technology (b) all divisions, substitutions, continuations,
continuation-in-part applications (provided the new matter in such
continuation-in-part applications results from inventions or
discoveries conceived and reduced to practice as part of the Research
Program by Symyx, or by ExxonMobil or an Affiliate of ExxonMobil, or
jointly by Symyx and ExxonMobil or an Affiliate of ExxonMobil), and
reissues, re-examinations and term extensions of (a) above and (c)
patents, utility models or similar grants of rights issuing on (a) or
(b). Program Patents shall not claim any Background Technology or any
Combinatorial Chemistry Technology.
42.03 "UNPUBLISHED PROGRAM TECHNOLOGY" shall mean Program
Technology that has not been published by mutual consent in accordance
with Section 11.03 or in a published Program Patent or Program Patent
application.
43. "PROJECTS" shall mean Research Projects and Tool-Build Only
Projects with the starting date and ending date as established by the Advisory
Committee.
43.01 "RESEARCH PROJECT" shall mean a planned body of
research, as defined by a Research Committee, carried out within a
designated ExxonMobil Exclusive Field and designed to achieve specific
goals and objectives. A Research Project must have a written Research
Plan, as developed by the Research Committee, which specifically sets
out the technical and royalty-bearing project scope of the Research
Project.
43.02 "TOOL-BUILD ONLY PROJECT" shall mean a project in a
designated Tool-Build Only Area where ExxonMobil or an ExxonMobil
Affiliate and Symyx will work cooperatively pursuant to a Research Plan
to create a Tool-Build/Workflow specifically adapted for carrying out
Combinatorial Chemistry in such designated Tool-Build Only Area.
44. "RESEARCH COMMITTEE" shall have the meaning set forth in Section
3.02.
45. "RESEARCH PLAN" shall have the meaning set forth in Section 2.01.
A-9
46. "RESEARCH PROGRAM" shall mean the program of research conducted by
Symyx Tech and ExxonMobil or its Affiliates on a collaborative basis under this
Agreement and shall include a number of mutually agreed Projects.
47. "RESEARCH PROGRAM TERM" shall have the meaning described in Section
2.02.
48. "ROYALTY-BEARING PROJECTS" shall mean*.
49. "SOFTWARE" shall mean the machine readable, object code versions of
Symyx Renaissance(R) Software Suite provided to ExxonMobil and its Majority
Owned Affiliates pursuant to Article 5, consisting of: Library Studio(R)
software, Impressionist(R) software, Epoch(TM) software, Spectra Studio
software, Polyview(R) software, Data Browser and the Renaissance Application
Server and related documentation.
50. "SOFTWARE CUSTOMIZATIONS" shall mean any and all improvements,
additions, enhancements, extensions, interfaces, resources, actions, changes, or
modifications made by ExxonMobil or its Majority Owned Affiliates to the
Software through use of the documented customization capabilities of the
Developer's Kit Software.
51. "SOFTWARE DEPLOYMENT PLAN" shall mean the plan for deploying the
Software within ExxonMobil, EMCC, and other Majority Owned Affiliates designated
by ExxonMobil, as set forth in Exhibit M hereto.
52. "SOFTWARE LICENSE TERM" shall mean the period beginning on *, and
ending *, unless terminated earlier or extended as provided in Section 14.01.2.
53. "SOFTWARE UPGRADES" shall mean all revisions to the Software or the
Developer's Kit Software that are developed by Symyx (which typically are
indicated by a change in the numeric identifier for the Software in the digit to
the right or the left of the decimal) and generally released to its customers
during the Software License Term, including any Developer's Kit versions of the
Software. In the event a Developer's Kit version of the Software is delivered as
an Upgrade, it shall be treated as Developer's Kit Software under this
Agreement.
54. "SYMYX" shall mean Symyx Tech and Symyx DTools.
55. "SYMYX COMBINATORIAL KNOW-HOW" shall mean know-how owned or
controlled in the sense of having the right to grant licenses without accounting
to others by Symyx with respect to the practice of Combinatorial Chemistry that
is disclosed or provided by Symyx to ExxonMobil or its Affiliates in connection
with the performance of this Agreement.
56. "SYMYX COMBINATORIAL PATENT RIGHTS" shall mean all patent rights
based on claims in patents now or hereafter owned or controlled in the sense of
having the right to grant licenses without accounting to others by Symyx,
covering Combinatorial Chemistry, but excluding claims to the extent such claims
cover compositions of matter, materials, compounds or formulations (e.g.
catalysts, phosphors, etc.) that are not part of the Program Technology, and
processes to make or use
A-10
* Confidential treatment requested
such compositions of matter, materials, compounds or formulations. Symyx
Combinatorial Patent Rights also shall exclude certain rights that have been
exclusively licensed to instrument manufacturers (i.e., *) as set forth in
Exhibit D.
57. "SYMYX DTOOLS" shall mean Symyx Discovery Tools, Inc.
58. "SYMYX PROPRIETARY FIELDS" shall mean Materials and processes in
those research areas that are set forth on Exhibit E hereto.
59. "SYMYX TECH" shall mean Symyx Technologies, Inc.
60. "THIRD PARTY" shall mean any party other than Symyx and its
Affiliates, ExxonMobil and its Affiliates, and their successors and permitted
assignees.
61. "TOOL-BUILD ONLY AREAS" shall mean those areas set forth in Exhibit
B.
62. "TOOL-BUILD/WORKFLOW" shall mean a system or workflow developed in
a Research Project or a Tool-Build Only Project that is specifically adapted for
carrying out Combinatorial Chemistry in a designated ExxonMobil Exclusive Field
or a designated Tool-Build Only Area.
63. "TOOL DELIVERY PERIOD" shall have the meaning set forth in Section
7.01.
64. "TOOLS COST" shall mean
64.01 *
65. "TOOLS PRICE" shall have the meaning set forth in Section 7.03.
A-11
* Confidential treatment requested
EXHIBIT B
EXXONMOBIL EXCLUSIVE FIELDS AND TOOL-BUILD ONLY AREAS
*
B-1
* Confidential treatment requested
EXHIBIT C
OPTIONAL FIELDS
*
C-1
* Confidential treatment requested
EXHIBIT D
CERTAIN EXCLUSIVE LICENSES
*
D-1
* Confidential treatment requested
EXHIBIT E
SYMYX PROPRIETARY FIELDS(1)
1. *
-------------------------
E-1
* Confidential treatment requested
EXHIBIT F
PROCEDURE FOR LEAD MATERIAL CONFIRMATION
F1. At such time as Symyx has identified a Material or family of
Materials that it believes may meet the established criteria for a Lead Material
in a particular ExxonMobil Exclusive Field it shall provide the data and results
supporting such conclusion to the Research Committee. Examples of target
criteria for Lead Materials are set forth in the Lead Material Criteria Section
of the Research Plan.
F2. (a) Except as provided in Section F2(b),
following the identification of any potential Lead Material, at
ExxonMobil's request, Symyx shall prepare and deliver to ExxonMobil or
its Designee reasonable gram quantities of Lead Material(s), which
ExxonMobil shall use in confirming whether such potential Lead Material
meets the applicable lead criteria. Further, Symyx will communicate to
ExxonMobil in writing the materials and conditions used to synthesize
the potential Lead Materials. ExxonMobil shall use commercially
reasonable efforts to confirm whether such potential Lead Material
meets the applicable lead criteria within * of delivery of the
potential Lead Material by Symyx, or such other reasonable period of
time as the parties may agree at the time of the transfer. In certain
circumstances, confirmation may be required in a pilot plant which may
result in confirmation longer than *. Symyx will use commercially
reasonable efforts to provide quantities in such amounts as the
Research Committee may determine is reasonably required by ExxonMobil
for testing, and will notify ExxonMobil if it is not commercially
reasonable to provide such quantities to ExxonMobil, in which case the
parties agree to meet and discuss how to proceed with respect to such
Lead Material.
(b) Symyx shall advise ExxonMobil if it is not capable of
providing reasonable gram quantities of a particular Lead Material to
ExxonMobil for testing. In such event, ExxonMobil will have sole
responsibility for preparing larger quantities of the potential Lead
Material for testing to confirm whether such potential Lead Material
meets the applicable lead criteria. Any additional knowledge or
technology developed during such scale-up of the potential Lead
Material shall be ExxonMobil Confidential Information and is
specifically not considered Program Technology. ExxonMobil shall notify
Symyx when sufficient Material has been prepared by ExxonMobil for
testing. If preparation of larger quantities is reasonably anticipated
to take longer than *, ExxonMobil will notify Symyx and the parties
shall meet and discuss how to proceed. Within * of preparation by
ExxonMobil of sufficient Material for testing, or such other period of
time as the parties may agree at the time of notification of
preparation of test quantities, ExxonMobil shall use commercially
reasonable efforts to confirm whether such potential Lead Material
meets the applicable lead criteria.
F3. The Research Committee shall review the results provided by
ExxonMobil with respect to a potential Lead Material, and if the Research
Committee determines that such results
F-1
* Confidential treatment requested
indicate that the applicable lead criteria have been satisfied, then such
Material shall be deemed to be confirmed as a Lead Material for all purposes of
this Agreement.
F4. In the event that the Research Committee requests further
information or the conduct of further studies to confirm whether a potential
Lead Material meets the applicable lead criteria, Symyx and ExxonMobil shall use
commercially reasonable efforts to prepare any such information and conduct such
studies.
F-2
EXHIBIT G1
RESEARCH PLAN - * PROJECT
*
G1-10
* Confidential treatment requested
EXHIBIT G2
RESEARCH PLAN - * PROJECT
*
G2-1
* Confidential treatment requested
EXHIBIT H
10. * PROJECT
*
H-1
* Confidential treatment requested
EXHIBIT I
KEY PERSONNEL
I1. Pursuant to Section 2.01.1:
- *
I2. Pursuant to Section 5.01:
- *
I-1
* Confidential treatment requested
EXHIBIT J
POTENTIAL RESEARCH PROJECTS AND TOOL-BUILD ONLY PROJECTS
J1. *
J-1
* Confidential treatment requested
EXHIBIT K
TEMPLATE FOR RESEARCH PLAN FOR NEW ACTIVE PROJECT
1. Field of Discovery
2. Field Exclusivity
3. Project Name
4. Project Description and Scope
a) Technical Project Scope
b) Royalty-Bearing Project Scope
5. Symyx Contact
6. ExxonMobil Contact
7. Technical Objective(s)
8. Lead Material Criteria
9. Symyx Tool(s) Required and Cost
10. Validation Phase, if any
a) Symyx and ExxonMobil Resource Commitments
b) Milestones/Deliverables/Timelines
c) Validation Plan
d) Database Requirements
e) Reporting Requirement
11. Discovery Phase
a) Symyx and ExxonMobil Resource Commitments
b) Milestones/Deliverables/Timelines
c) Experimental Plan
d) Database Requirements
K-1
e) Reporting Requirements
12. Target Commercial Products
13. Compensation for Commercial Use
a) Illustration of Expected License Fee
b) Minimum and Maximum Fees
14. Project Duration and Termination
K-2
EXHIBIT L
CALCULATION OF LICENSE ROYALTIES FOR ALL ROYALTY-BEARING PROJECTS
EXCEPT THE * PROJECTS
*
L-1
* Confidential treatment requested
EXHIBIT M
SOFTWARE DEPLOYMENT PLAN
This document preliminarily describes the expected activities in the deployment
of Renaissance software within ExxonMobil, EMCC, and other Majority Owned
Affiliates designated by ExxonMobil. Specifics of sequencing, timing and
durations are expected to change as the project proceeds and will be agreed upon
by the Research Committee for the Software Deployment Plan ("RC"). The RC will
agree upon a more detailed Software Deployment Plan prior to *.
1. *
M-1
* Confidential treatment requested
EXHIBIT N
POST SOFTWARE TERM LICENSE OPTIONS
OPTION 1 - FULL SOFTWARE LICENSE AFTER *
-------------------------------------------------------------------------------------------------------------
TERM PRICE INCLUDES
-------------------------------------------------------------------------------------------------------------
Annual, recurring with $* per year License to use all Software, ExxonMobil and Majority Owned
automatic year-to-year Affiliates.
renewal, paid-up after * to
Software as it exists at that 1. Software Upgrades
time (no further updates,
upgrades, support or a. No user or seat restrictions
maintenance unless
separately agreed upon) b. Typically 1-2 major upgrades per year
c. Typically 4-5 minor upgrades per year
2. Support
a. No user or seat restrictions
b. Telephone hot-line
c. Website support
d. Email support
3. Maintenance
a. No user or seat restrictions
b. Bug fixes
c. Patches
-------------------------------------------------------------------------------------------------------------
N-1
* Confidential treatment requested
OPTION 2 - EXISTING SOFTWARE LICENSE AFTER *
----------------------------------------------------------------------------------------------------------------------------
TERM PRICE INCLUDES
----------------------------------------------------------------------------------------------------------------------------
Annual, recurring with $* per year License to use all Software, ExxonMobil and Majority Owned
automatic year-to-year Affiliates, as such products exist as of * (plus purchased Upgrades).
renewal, paid-up after * to
Software as it exists as of * 1. Software Upgrades
(plus any Software
Upgrades purchased by a. Provided at-charge upon ExxonMobil written
ExxonMobil and its request
Majority Owned Affiliates
during such * period). b. Typically, a major annual upgrade will be quoted
at fair market value, plus any installation charges
at $* plus travel expenses
2. Support
a. Basic telephone support for minor questions
b. Support billed at $* plus travel expenses if any
----------------------------------------------------------------------------------------------------------------------------
N-2
* Confidential treatment requested
EXHIBIT O
* ROYALTY BASIS
(1) *
O-1
* Confidential treatment requested
EXHIBIT P
CALCULATION OF PROJECTED ADDED VALUE
*
P-1
* Confidential treatment requested
EXHIBIT Q
LICENSE PAYMENT OPTIONS
*
Q-1
* Confidential treatment requested
EXHIBIT R
EXAMPLE LICENSE PAYMENT CALCULATION BASIS
*
R-1
* Confidential treatment requested
EXHIBIT S
ALTERNATIVE DISPUTE RESOLUTION
ExxonMobil and Symyx shall resolve any dispute arising out of or relating to
this Agreement by binding arbitration before a sole arbitrator pursuant to the
CPR Institute for Dispute Resolution ("CPR") Rules for Non-Administered
Arbitration ("CPR Rules") as modified in this Exhibit S.
1) Upon service of the notice of arbitration, either ExxonMobil or Symyx
may request the CPR in writing to appoint an arbitrator with expertise
in the disputed subject area to resolve the dispute. The arbitrator
selected shall be a member of the Judicial Panel of the CPR and shall
not be an employee, director or shareholder of either ExxonMobil, Symyx
or of their Affiliates. Nothing in this provision limits the right of
either ExxonMobil or Symyx to challenge the arbitrator pursuant to Rule
7 of the CPR Rules.
2) Unless ExxonMobil or Symyx otherwise agree, the arbitrator shall use
his or her best efforts to commence the evidentiary hearing(s) to
resolve the dispute no later than * after his or her selection. The
hearing(s) shall be held at a place agreed upon by the parties or, if
they are unable to agree, at a place designated by the arbitrator.
3) The arbitration proceedings shall be confidential as mandated by the
CPR Rules, and the arbitrator shall issue appropriate protective orders
to safeguard the Confidential Information of ExxonMobil and Symyx.
4) Discovery, although permitted as described in this Exhibit S, shall be
limited. The arbitrator shall permit discovery necessary for an
understanding of any legitimate issue raised in the arbitration.
ExxonMobil and Symyx shall each be permitted to take the deposition of
no more than * with each such deposition not to exceed * in length. If
the arbitrator believes that exceptional circumstances exist, and
additional discovery is necessary for a full and fair resolution of the
issue, the arbitrator may order such additional discovery as the
arbitrator deems necessary. At the hearing, ExxonMobil and Symyx may
present testimony (either by live witness or deposition) and
documentary evidence. The arbitrator shall have sole discretion with
regard to the admissibility of any evidence and all other materials
relating to the conduct of the hearing.
5) At least * prior to the date set for the hearing, ExxonMobil and Symyx
shall submit to the other and to the arbitrator the following:
(a) a list of all documents on which such party intends to
rely in any oral or written presentation to the arbitrator;
and
(b) a list of all witnesses, if any, such party intends to
call at such hearing; and
S-1
* Confidential treatment requested
(c) a brief summary of each witness's testimony.
6) At least * prior to the hearing, ExxonMobil and Symyx shall submit to
the arbitrator and to the other a brief addressing the evidence and
issues to be resolved, together with a proposed ruling on each issue to
be resolved and a proposed remedy. Such pre-hearing briefs shall not be
more than *, not including the appendix. If the arbitrator determines
that exceptional circumstances exist, the arbitrator may permits briefs
of greater length.
7) The arbitrator shall rule on each disputed issue as expeditiously as
possible. The arbitrator shall, in rendering the decision, apply the
governing law as specified in Section 15.01 of the Agreement, without
giving effect to its principles of conflicts of law. The United States
Arbitration Act shall govern the arbitration. The arbitrator is not
empowered with the remedy of termination of the Agreement, except
consistent with the termination provisions of the Agreement.
8) Any judgment upon the award rendered by the arbitrator may be entered
in any court of competent jurisdiction.
9) The arbitrator shall have the option to assess costs and expenses,
including, without limitation, attorneys' fees, against one or both of
ExxonMobil or Symyx, as the arbitrator deems appropriate.
S-2
* Confidential treatment requested
EXHIBIT T
DRUG AND ALCOHOL POLICY
1. Symyx' employees, agents, and subcontractors ("Symyx Personnel") should
not be under the influence of, use, possess, distribute or sell
alcoholic beverages, or illicit or controlled drugs for which the
person has no valid prescription, use, possess, distribute or sell drug
paraphernalia, or misuse legitimate prescription or over-the-counter
drugs on or when handling real or tangible personal property of
ExxonMobil or its Affiliates ("ExxonMobil Property") or while providing
services to third parties on behalf of ExxonMobil, subject to the
provisions of 4 below. Under the Influence means: (1) the presence of:
(a) illicit or controlled drugs or mood or mind altering substances,
(b) prescribed drugs that are used in a manner inconsistent with the
prescription, (c) alcoholic beverages, or (d) metabolites of any of
them in body fluids above the cut-off level established by Symyx'
Policy; and/or (2) the presence of any of those substances that affects
an individual in any detectable manner. The symptoms of influence may
be, but are not limited to, slurred speech or difficulty in maintaining
balance.
2. Symyx has adopted, or will adopt, its own policy to assure a drug and
alcohol free work place on ExxonMobil Property ("Symyx' Policy").
3. Symyx will permanently remove any Symyx Personnel from the Research
Program who violates Paragraph 1 on ExxonMobil Property unless
ExxonMobil and Symyx otherwise agree.
4. Symyx will remove any Symyx Personnel from ExxonMobil Property any time
Symyx or ExxonMobil suspects that individual of alcohol/drug use, or
any time an incident occurs where drug or alcohol use could have been a
contributing factor. An individual so removed will be allowed to return
to ExxonMobil Property or providing services to third parties on behalf
of ExxonMobil only after Symyx conducts alcohol and drug testing on the
individual as soon as possible following the individual's removal, and
Symyx certifies in writing the test identification number, the
individual's work identification number, the test date and time, and a
negative test result. On that written certification Symyx will include
a consent signed by the individual permitting disclosure to ExxonMobil
of the test result. The entity providing testing and related services
must at a minimum satisfy U.S. Department of Transportation standards.
Symyx will not use an individual removed pursuant to this paragraph to
perform work for ExxonMobil who either refuses to take, or tests
positive in, any alcohol or drug test.
5. Symyx' Policy and its implementation shall prohibit Symyx and Symyx
Personnel from using, possessing, selling, manufacturing, distributing,
concealing, or transporting on ExxonMobil Property any contraband,
including firearms, ammunition, explosives, and weapons.
T-1
6. ExxonMobil may, without prior notice, search the person, possessions,
and vehicles of Symyx Personnel on ExxonMobil Property. Any person who
refuses to cooperate with such search will be removed from ExxonMobil
Property and not allowed to return.
7. Symyx will comply with all applicable drug and alcohol related laws and
regulations, e.g., United States Department of Transportation
regulations, United States Department of Defense Drug-Free Workplace
Act of 1988.
8. ExxonMobil shall have the right to review Symyx' Policy and to verify
that Symyx' Policy and enforcement thereof is acceptable to ExxonMobil
management.
T-2
EXHIBIT U
SOFTWARE SPECIFICATIONS
The Renaissance(R) software is a suite of workflow-based modules designed to
facilitate Combinatorial Chemistry. The modules are listed as follows:
Library Studio(R) -- synthesis specification and visualization
Impressionist(R) -- control of hardware devices
Epoch(TM) -- data capture, analysis, and storage
Spectra Studio(TM) -- comparison of spectra
PolyView(R) -- data querying, retrieval, and reporting
Data Browser(TM) -- Web-based experiment reports
Renaissance Developer's Kit -- customization of Renaissance products through
exposed Application Programmer Interfaces (APIs)
Renaissance(R)Application Server -- data storage, querying, and workflow data
correlation
*
U-1
* Confidential treatment requested
EXHIBIT V
DISCOVERY TOOL COST ESTIMATING PROCEDURE
Per Section 7.02, at the time that the specifications for a Discovery Tools
System are finalized, Symyx D Tools will provide a detailed cost estimate of
such Discovery Tools System. The cost estimate summary provided to ExxonMobil or
its Affiliate should be in a format consistent with this Exhibit. The details in
this Exhibit are exemplary. Symyx will provide sufficient detail in the estimate
in order for ExxonMobil or its Affiliate to authorize construction of the tool.
The Cost Estimate will include an Estimate Summary and an Estimate Basis
Summary. The estimate will be sent to ExxonMobil or its Affiliate with a cover
letter describing the Facility, Estimate Basis, Planned Delivery Date, Key
Construction milestones and any areas of concern associated with the cost
estimate.
V-1
*
V-2
* Confidential treatment requested
EXHIBIT W
WORKPLACE HARASSMENT POLICY
Symyx, its employees, agents and subcontractors shall follow certain standards
of conduct while performing services for or communicating with employees,
agents, customers and other contractors of ExxonMobil or its Affiliates.
ExxonMobil and ExxonMobil Affiliate personnel shall follow the same standards of
conduct in their interaction with Symyx personnel. A summary of ExxonMobil's
policy is included in the attached memorandum. Symyx will inform each of its
employees, agents, and subcontractors who perform, or will perform services for
ExxonMobil or its Affiliates of these expectations and provide each with a copy
of the attached memorandum. Symyx will promptly notify the ExxonMobil contact
for the applicable services of any report or complaint of harassment or of any
violation of the standards of conduct. Symyx will cooperate with ExxonMobil and
its Affiliates in any investigation. Neither ExxonMobil and its Affiliates nor
Symyx will retaliate against anyone who reports an incident of harassment or who
cooperates in any investigation of such incidents.
W-1
MEMORANDUM TO: Symyx Personnel Performing Services for ExxonMobil and
ExxonMobil Affiliates
FROM: ExxonMobil
SUBJECT: ExxonMobil Harassment Policy and Complaint Resolution Process
In providing services for ExxonMobil and its Affiliates, you need to understand
ExxonMobil's expectations regarding the subject matter:
- Symyx's employees, agents, and subcontractors are prohibited from engaging
in any act of harassment toward employees, suppliers, customers, or other
contractor employees of ExxonMobil or its Affiliates.
- Employees, agents, and contractors of ExxonMobil and its Affiliates are
prohibited from engaging in any act of harassment toward other employees,
suppliers, customers, or contractor employees, including employees, agents,
and subcontractors of Symyx.
EXXONMOBIL'S HARASSMENT IN THE WORKPLACE POLICY prohibits all forms of unlawful
harassment based on race, color, sex, religion, national origin, citizenship,
age, disability or veteran status. In addition, ExxonMobil's policy prohibits
all other forms of harassment, which, while not unlawful, are considered
inappropriate in a business setting. ExxonMobil will not tolerate harassment in
the workplace, whether committed by or directed at employees, contractors,
suppliers, or customers. Symyx personnel who violate the policy are subject to
removal from work assignments for ExxonMobil or its Affiliates.
Examples of behaviors prohibited by ExxonMobil's policy include:
- Racial or ethnic jokes, slurs, epithets, cartoons or graffiti
- Sexually graphic comments, epithets, pictures, cartoons, gestures or
graffiti
- Taunting on the basis of actual or perceived sexual orientation
- Repeated use of demeaning or degrading comments based on individual
characteristics
- Repeated use of offensive profanity or intimidating behaviors like yelling
or throwing objects
- Threats of harm, violence, or assault
- Unwanted sexual flirtations or unwelcome, unnecessary touching
- Requesting sexual favors in return for a tangible employment action
If you are the victim of harassment in the workplace or if you witness any
incident of harassment, you should immediately report the incident to a
supervisor or management representative of Symyx and to the ExxonMobil
representative for whom you are performing services, as appropriate. If, for any
reason, you do not feel comfortable discussing the matter with your supervisor
or the
W-2
ExxonMobil representative, you should bring the matter to the attention of
Symyx's Human Resources Department, to your second-tier supervisor or any
manager at Symyx. The important thing is that you bring the matter to Symyx's
attention promptly so that any concern of harassment can be investigated and
addressed appropriately. ExxonMobil will collaborate with a management
representative of Symyx to investigate the reported policy violation and
initiate action needed to appropriately address the complaint. Neither
ExxonMobil and its Affiliates nor Symyx will retaliate against anyone who
reports an incident of harassment or who cooperates in any investigation of such
incidents.
A copy of this letter has been provided to a management representative of Symyx
so that he/she is knowledgeable of the standard of conduct expected on
ExxonMobil premises or while performing work for ExxonMobil or its Affiliates.
You are encouraged to become familiar with the provisions of this letter and the
complaint reporting procedures of both Symyx and ExxonMobil.
If you have any questions about this letter, please contact Symyx, the
ExxonMobil representative for whom you perform work or a representative of the
ExxonMobil Human Resources Department.
W-3